You have asked us to carry out a Trade Mark Search and our report is attached. Such searching is frequently a source of useful information and we are happy to carry out this work.
However, searching does have its limitations as explained in more detail below. We want you to understand the significance of these limitations. There can be no such thing as an infallible search. If this note makes you feel that the searching we are doing for you is not what you need, or not wide enough, please tell us. We may be able to extend the search to reassure you, but costs will then increase.
Please make it clear to us if you are going to make a substantial investment or expenditure dependent on the result of the search. Please also bear in mind that infringement of a Trade Mark Registration can carry criminal as well as civil penalties.
Cost effectiveness
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 and in a cost effective manner. This is particularly true if you
have 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 of thoroughness. If the purpose of the search is to give “clearance” before making a substantial investment, it may be appropriate to search rather widely. If so, please let us know.
“Knock-outs”
Where the search has found something which we believe puts into question the use and/or registration of your trade mark, we may terminate the search to reduce expense. If you decide to go ahead despite what we have found, please let us know so that we can advise whether it is necessary to carry out additional searching.
Unregistered and lapsed marks
The search looks for registered trade marks and applications for registered trade marks. It does not cover marks which are in use but for which there is no application or registration. In a number of EU countries, substantial rights may be given by use of a trade mark and if you know, or become aware, of the same or similar mark in use please let us know, with details, so we may advise you further.
In addition, we will have placed less emphasis on applications/registrations which have lapsed or been withdrawn. However, there are some circumstances in which a lapsed mark may be restored, in particular a withdrawn European Union trade application may later be converted into national applications in the EU countries. If there is a lapsed/withdrawn mark which concerns you, please let us know and we will advise further.
At additional cost we can also instruct searches of various Companies Registers, Domain Name Registers, the internet and trade publications. You will appreciate that such searches merely provide a little more peace of mind, it is simply not possible to ensure that every conflict is revealed. Such additional searching can prove expensive as quite often we will need to make more detailed investigation into the use of a potentially problematic mark.
Marks registered for dissimilar goods or services
The search looks for marks which are the same as or similar to your mark and which cover goods or services which are the same as or similar to those for which you intend to use your mark. However, use and/or registration of your mark may be brought into question if the same or similar mark is already registered for goods or services which are not similar to your goods or services and use of your mark would “take unfair advantage of, or be detrimental to, the distinctive character or repute” of the registered mark.
Therefore, you should think carefully before adopting a mark which is the same as or similar to someone else’s mark that you already know of, even if that is used in a different field of activity. It is not practical, without making the search excessively expensive, for us to search for identical or similar marks registered for goods or services which are not similar to yours.
Geographical reach
Unless indicated otherwise, the Trade Mark Register Search is limited to trade mark applications and registrations on the EUIPO Register.
If you want us to extend the search to national trade marks of EU member states and/or other countries, please let us know. In some other countries, especially the USA and the UK, use even without registration can give rise to substantial rights.
European Union Trade Marks
Since 1 April 1996, it has been possible to file European Union trade mark (EUTM) applications which, if and when registered, give rights in all countries of the EU dating from the date of application and possibly earlier.
If we have found one or more relevant EUTMs we will have considered whether your use of the mark might infringe.
The search does not cover national registers of other EU member states or international applications or registrations designating single EU member states.
If you plan to use the mark substantially in one or more EU countries then please let us know as it may be advisable to carry out national searches in those countries.
International applications
Since 1 April 1996, it has been possible to file, at the World Intellectual Property Office (WIPO) in Geneva, “International” trade mark applications which designate the EU. Such applications, if and when registered, give rights in the EU dating back to the date of application and possibly earlier.
Details of such international trade mark applications are passed from Geneva to the EU Intellectual Property Office. The Office subsequently makes details of such international trade mark applications available via our usual database. However, there can be a long delay before the details are available.
Therefore, although we have checked the details of international trade mark applications and registrations on the database we use, you should note that there may be international trade mark applications and registrations not found which may be the same or similar marks to yours, and for the same or similar goods or services. These may result in rights which may affect you.
Computer databases
(i) The search was made using various computer databases. Whilst we have no reason to doubt the reliability of the search, we cannot be responsible for errors or omissions in the databases.
(ii) There is a short delay before the data is available. Therefore, recent applications and other recent events may not be covered.
(iii) The data available does not always show whether a pending application is to be back-dated to the date of an application in another country due to a priority claim. This information is not available on application. Such back-dating could affect the effective date of the registration by up to six months. Further, it is possible for an application to be filed in the EU up to six months from now and be back-dated to the date of a foreign application filed in the last six months. Such applications could therefore still be filed and of course will not have been found.
(iv) We will not, unless you have asked us to, have searched for relevant applications in other countries.
Descriptiveness
If you are interested in registering your mark, you should be aware that marks are generally unregisterable if they are descriptive of any of the goods or services which are to be claimed.
It is not practical for us to check this except in obvious cases, since the range of terms used in any field of business is large. You are in a better position to know the terms used in your field of activity. Please tell us if you think there may be a problem so that we can assess it.
Graphical marks
If a graphical part of the mark is of particular importance to you, please let us know. It is difficult to search comprehensively for marks which contain or consist of graphical elements, particularly if those elements are geometrical shapes or abstract designs, of which there are many. The indexing system for graphical elements is not always applied consistently or correctly or comprehensively. The cost of searching against every possible relevant category would be substantial if not prohibitive, and even if such a search were to be carried out relevant marks might not be found if they had not been indexed correctly.
Unusual marks
Since 14 January 2019 there has been no requirement for a mark filed at the EUIPO to be ‘capable of graphical representation’. This means that marks such as sound marks, motion marks, multimedia marks and hologram marks can be filed in different formats. It may not be possible to include the content of all such marks in the results of our search.
Registered European Community Designs
The search did not cover Registered Community Designs.
The introduction of the Registered Community Design system from 1st April 2003 means that the scope of registered design protection has been broadened somewhat to include lines, contours, colours, shape, texture, material or ornamentation of a product or part of it.
Registered Community Designs could therefore protect the colours or ornamentation applied to products or their packaging, graphic pictures, the shape of goods or their packaging, logos and even in certain circumstances words or slogans. A Registered Community Design could therefore pose an obstacle to the use and registration of your trade mark.
If you are interested in us undertaking searches of the EUIPO designs register for potentially conflicting registered designs, please contact us immediately.
Potentially further conflicting rights of third parties
The search did not cover further rights which could pose an obstacle to the use and registration of your trade mark. These rights are, in particular, copyrights, work title rights, company name rights, Unregistered Community Designs and rights and claims that could be based on Unfair Competition laws in countries of the EU. It is not practical, without making the search excessively expensive, for us to search indications of these rights in an almost infinite number of sources, especially on the Internet.