UK TRADE MARK CLEARANCE SEARCHES
Before adopting a new trade mark or brand name, it is nearly always advisable to conduct some trade mark searching. Indeed, it is often sensible to include this searching process as part of the due diligence exercise that goes with creating a new name or logo. Searching can also be important for established trade marks, if, for example, the mark is about to be used in relation to new product sectors or geographic markets for the first time.
A UK clearance search is a search of the UK, European Union Trade Mark (or ‘EUTM’)* and International trade mark registers to see if there are any existing registered rights for the same or similar trade marks, covering identical or similar goods or services, all of which could present problems. The search is adapted to reveal potential infringement issues in the UK and so the results would hopefully give you some comfort that you are able to use your trade mark without fear of infringing someone else’s pre-existing trade mark rights, or else alert you to any problems and so allow you to consider a different strategy. For reference, the International register is searched for applications or registrations designating the UK or EU. Trade marks applied for or registered in the European Union have effect in the UK.
Instructing us to conduct a UK clearance search for a new trade mark is a straightforward process. All we need to know is the mark we that will be searching and the relevant products and/or services for which the mark will be used. We will then conduct the search and provide you with a report that provides a summary on your ability to adopt (and register) the new trade mark and commentary on the most serious issues. This will give you valuable intelligence on whether your new trade mark is safe to adopt, use and/or register.
| * previously Community Trade Mark (CTM) |
Reporting the results of a UK clearance search typically takes about 7-10 working days from being instructed. It is possible to turn the search around on a quicker basis if necessary, although there is a premium charge for a faster service.
The estimated costs for conducting a UK clearance search for a brand name (or ‘word mark’ as we call them) usually start at around £550 to £650 + VAT for a normal turnaround. This is for a typical list of goods or services covering up to ten classes of products or services (under trade mark law, all products and services fall under one of 45 ‘classes’, with each class being composed of broadly similar items). It is therefore clear to see that the cost of doing the legwork at the outset is nominal in comparison to the potential costs of unexpected litigation or a forced rebrand.
Unless a search is conducted in a very elaborate, and therefore expensive, manner, it is sometimes necessary for us to make a judgement as to what is reasonable in order to provide the results you want or need in a cost effective manner. This is particularly true if you have to put a cost limit on the search.
Depending on the reason for searching, the compromise between thoroughness in searching on the one hand, and time and cost on the other, may be made at different levels. If the purpose of the search is to give “clearance” before making a substantial investment, it may be appropriate to search rather widely.
Please note that search results are dependent on the third-party proprietary database(s) on which the searches are carried out. Whilst we have no reason to doubt the accuracy of those databases, we of course cannot be responsible for any errors or omissions. In particular, very recent applications may not be included.
Furthermore, you should be aware that rights in trade marks in the UK can be obtained by use, without there being a registration or an application, and such marks would not be found by this type of search. A UK common law search would be required to identify any such issues. Also, in some circumstances, rights in registered trade marks may extend to dissimilar goods, and again that would not be within the scope of this search.
Please refer to our separate information sheet on the limitations of trade mark searching for more details.
We offer a number of additional trade mark searches that could assist if you would like to expand upon the results of a UK clearance search:
Clearance Searching in Other Countries
Whilst a UK clearance search would highlight any EUTM registrations that are problems in the European Community, it could never, however, give approval to use the trade mark concerned throughout the European Community, since it would not check for any national registrations in other European Community member states (for example, German or French registrations). We would need to instruct local attorneys to conduct separate searches in each European Community country to get the full picture. Estimated costs for these separate searches vary, but would be approximately £500-£1,000 + VAT per word mark, per country.
Of course, a UK clearance search also would not give any indication about your freedom to use the mark in other countries outside of the EU either, such as the US, Canada or Japan. Again, separate searches in each country of interest would be needed. Unfortunately, the cost of conducting a totally comprehensive clearance search in every country of interest is often prohibitively expensive. For information, a US clearance search would cost approximately £1,500 + VAT, whilst a comprehensive search in all European Community member states would probably cost well over £10,000 + VAT. For this reason, clients sometimes choose to only conduct searches in their top priority countries.
It is possible to conduct identical searching for your trade mark, including on a worldwide basis. This would be less comprehensive than a clearance search, as it would not check for similar marks, and so would not give you an indication as to whether or not you are safe to use the mark. However, it would flag up any potential “killer” or “knock-out” problems for your use/adoption of the mark and for its registration. The cost of identical searching depends upon the number of ‘hits’ revealed by the search, but it is often around £150-£200 + VAT per word mark. Many clients elect to do an identical search and then supplement the results with full clearance searches in their most important countries, accepting a degree of risk elsewhere.
Other additional searching services that we can provide include:
Please contact us for more information about UK clearance searches or any other searching services that we can provide.
This information is simplified and must not be taken as a definitive statement of the law or practice.