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Trademark Search

Why do a Search?

 

A trademark search is a vital part of the process. It is through the searching process that we can reveal whether your proposed mark is capable of registration. The raison d'etre of the search is to ascertain whether or not there exists an identical or similar mark registered in the same or dissimilar classes that you seek protection in.

If you do not carry out a search then you are applying for a trademark 'blind' and significantly increase the risks of losing the filing fees.

The search may also allow us to identify the likelihood of your proposed mark being registered based on the earlier opposition from examiners and recent case law.

Therefore if you are considering filing for a trademark, we strongly advise you carrying out a search.

In order to carry out a search we will require from you a brief description of the good or services, together with your use within your industry. This will assist us when we decide the appropriate area to seek protection under.

 

What are the different types of searches?

 

There are three types Word, Word and Logo, Logo only.

For example

What is a search? Does it include variations of my 'name' and 'logo'?

 

A search involves checking the relevant registers for existing registered marks which may conflict with a proposed mark.

How many classes does the search fee cover? How much do additional classes cost?

 

For the UK, EU, USA the quoted search fee is just one fee, there is no charge for additional classes.

In terms of International trademark searches, it is necessary for us to instruct agents who are familiar with the local trademark laws and language; as a result charges may be made on a per class basis.

Please refer to the calculator for further details of this.

Does the search guarantee that my mark will be registered?

 

Due to the numerous factors which make up the trademark process it is not possible to give an absolute guarantee that a mark will be registered; the opinion of an Examiner or a third party opposition is not something which can be predicted. However the search should turn up any major problems which are likely to occur with an application, which should assist you in making a more informed decision.

Some examples of refusal

A trademark application may be refused if the proposed mark is

1. identical to an existing mark and it is intended to be used in relation to identical goods or services; or
2. if it is confusingly similar to an existing mark and it is intended to be used in relation to similar or identical goods or services; or
3. if it confusingly similar to an existing mark and it is intended to be used in relation to dissimilar goods or services and where the trademark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

When a trademark has been filed all fees are non-refundable regardless whether it is successful.

How much does is cost?

 

We offer searches throughout the world but have found that the three main areas are:

 

NB. The search only covers those applications made via the Patent Office in the UK, the Office for Harmonisation in the Internal market in Alicante and the USA Patent Office. It will not cover individual marks filed in each of the 25 member states. This we can do based on a separate price structure.

Please refer to our cost calculator for a breakdown of fees.

How long with it take?

 

From when we receive your instruction we guarantee a full search report within 48 hours. It is then a matter for you to decide on whether or not you wish to proceed with your application.

Trademark Application

 

How much does a Trademark Application cost?

 

We can file trademark applications throughout the world but have found that the three most common geographical areas have been UK, EU, USA. For the costs of filing a trademark application, please refer to our cost calculator.

How long will it take?

What are Classifications?

 

When applying to register a trademark you must provide us with a list of all goods and/or services which the mark will be used for. The goods and/or services fall into specific classes.

The following list of classes give a basic description about the types of goods and services which belong to each class. This list is not definitive, it is merely a guide to determine which classes are needed for registration.

What factors will an Examiner consider when assessing my application?

 

A UK application will be refused on 2 grounds namely absolute and relative grounds.

Absolute Grounds

These grounds include but are not limited to marks which are devoid of any distinctive character, marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

A mark shall not be registered as a trademark if it consists exclusively of-

1. the shape which results from the nature of the goods themselves,
2. the shape of goods which is necessary to obtain a technical result, or
3. the shape which gives substantial value to the goods,
4. contrary to public policy or to accepted principles of morality, or
5. of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

A trademark shall not be registered if or to the extent that the application is made in bad faith.

Relative grounds

This includes other registered marks. For example

A trademark shall not be registered if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services for which the earlier trademark is protected.

Or

A trademark shall not be registered if because (a) it is identical with an earlier trademark and is to be registered for goods or services similar to those for which the earlier trademark is protected, or (b) it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.

Or

A trademark which (a) is identical with or similar to an earlier trademark, and (b) is to be registered for goods or services which are not similar to those for which the earlier trademark is protected, shall not be registered if, or to the extent that, the earlier trademark has a reputation in the United Kingdom (or, in the case of a Community trademark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

Or

A trademark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trademark or other sign used in the course of trade, or (b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs.

A Community trademark will only be assessed by the Examiner under the absolute grounds for refusal. However at a later stage in the process (publication) third parties will opportunity to raise objections under the relative grounds.

What is a Community trademark ('CTM')?

 

A CTM provides protection for a mark in all 25 EC member states; this includes:

Austria, Belgium, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden, The Netherlands, United Kingdom.

Does a Community trademark search include searches of the individual country's registries?

 

No, it only covers the CTM register itself. It is possible for us to obtain searches for each country but this will add significantly to the fee. (See International section for indication of this.)

What is an International trademark?

 

This is a trademark registered with the World Intellectual Property Organisation under an International agreement, the Madrid Protocol. This enables applicants/ owners of trademark applications/registrations of a particular country to extend protection to their marks to other member countries. There are currently 66 signatories to this agreement.

Both a UK national mark and a CTM are members of WIPO and can be used to apply for registration in other countries.

What countries are members of the Protocol?

What is the advantage of filing an International trademark?

 

It greatly simplifies the process of registering a trademark in multiple countries by circumventing the need to file application in each individual country.

It is possible to set up an application by designating one country and then adding another country to your list at a later date.

It also makes such registrations easier to maintain as only one application will be needed when it comes to renewal.

The country I want to register is not listed as a member of the Protocol, can you still help me gain registration?

 

Yes, we have links with agents all over the world, so if you cannot find the country you want on our database, please feel free to contact one of the team who will be able to assist you.

 

How long until the trademark is registered?

 

All time scales are dependant on the work load of the relevant registration at the time of application and as such the below are estimates based on current experience.

How long does my trademark last? How do I renew it? What are the renewal fees?

 

Once registered a trademark can continue indefinitely, on the payment of a renewal fee every 10 years, provided that it does not remain unused for a continuous period of 5 years and a renewal fee is paid every tenth anniversary of the filing date.

Can I lose my trademark?

 

It is possible for third parties to apply to revoke or invalidate a registered mark.

In the UK and EU a trademark can be revoked if the owner fails to use the mark, either itself or through a licensee, for a continuous period of 5 years. Other reasons include the mark has become a common term in the trade in question or the use made of it has lead to a possibility of misleading the public.

Third parties can apply to have a mark invalidated if they can show that the mark should have been refused under the absolute or relative grounds for refusal.

What is the difference between the TM and ® symbols? When can I use them?

 

The TM symbol merely indicates that you view the mark as your trademark and as such can be used on either an unregistered or a registered mark.

The ® symbol specifically indicates that the mark to which it is affixed is registered. Consequently it is an offence to use it unless you are in receipt of the certificate for the trademark.

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