Trade Mark Searches
Before filing a new trade mark application Dummett Copp attorneys will carry out an identical word mark search. Both the UK and European trade mark registers are searched to determine if exactly the same mark has already been registered for exactly the same goods and/or services as you intend to apply for.
This pre-filing search is carried out at no additional charge to you as part of our filing procedure.
Infringement or Clearance Search
Although the basic pre-filing search may locate identical trade marks that have already been registered, infringement of a registered trade mark can also occur if the mark you are using is confusingly similar to the earlier mark and is to be used on similar goods.
In order to determine if you are free to use your chosen trade mark it is advisable to carry out a full clearance search. This more detailed search, carried out by professional searchers, aims to locate all identical and similar marks that are registered for identical or similar goods and/or services. The results of the search are then analysed to determine whether any earlier rights exist that may potentially conflict with your use of your trade mark.
Trade Mark Watching
In order to police your trade mark rights, it is necessary to keep an eye on the market to see whether others are making use of your trade marks without authorisation. One simple and inexpensive way to do this is to institute a watch service.
This is a cost effective way to find out at an early stage if others are planning to use a trade mark which is the same as or similar to yours. It is always easiest to deal with such a situation before the later party starts to build up their own rights in the mark.
Furthermore, although it might be thought that ownership of a trade mark registration will prevent somebody else registering the same or a similar trade mark, this is not actually the case. A Trade Mark Watch will alert you to the existence of a new application for registration which might conflict with your rights, to enable you to take action early to prevent new rights being granted to a third party.
As most countries that register trade marks publish a list of trade mark applications in their country on a regular basis, it is possible to scan all of these publications as they appear and to alert trade mark owners of an application by another party to register the same or a similar trade mark.
Although many countries do carry out searches and reject later applications which conflict with earlier registrations, many other countries do not do this and leave it to the trade mark owners to police their own rights. In particular, when a new application for registration is made to the UK or European Trade Marks Registry, the Registry carries out a search but will not reject an application because of an earlier similar registration.
It is, therefore, possible for a trade mark to be registered in the United Kingdom, or throughout the European Union, even though it is confusingly similar to an earlier registration. We, therefore, recommend that all trade mark proprietors subscribe to a watching service that monitors published trade mark applications.