A Guide to Carrying Out a Trademark Search

by Kate Mcormack - Solicitor and Trademark Attorney

The guide below explains how to carry out a trademark search, the points to consider and what your options are for getting the search done for you.

 A trademark search is a search that can be conducted by a trademark registration company to check whether there are any similar trademarks that have already been registered.

The Intellectual Property Office (IPO) and Office for Harmonisation in the Internal Market (OHIM) do not refuse trademark registration applications because there are other identical or similar marks already on their registers. However, they do write to the owners of some of those marks to let them know that an application for registration of a similar mark has been made.

It is then up to those owners to decide whether or not they want to oppose the new application. They will have a two or three month window during the application process during which they can file an opposition, depending on whether the new application is for a UK only or a European Community trademark (CTM). If they do oppose an application, it is then suspended to allow the parties to negotiate a compromise or, if none is possible, the case will be decided on the basis of the evidence filed by both parties. If the owner of the registered mark is successful in the opposition, then the new application will fail and the applicant may also have to pay the registered owner’s opposition costs. The IPO and OHIM never reimburse the official filing fees for submitting a trademark registration application so these will also be lost by the new applicant.

So receiving an opposition is a serious matter and the risk of doing so should always be properly assessed by having a comprehensive trademark search conducted before filing an application.

The trademark registration company will search for marks that may be considered confusingly similar to the mark to be applied for. There are various elements that may make a mark confusingly similar. The marks themselves may contain identical words or pictures and cover non-identical, identical or similar goods and services. Or the marks may be visually, aurally or conceptually similar and and cover identical or similar goods and services. In general, the less similar the marks, the more similar the goods and services will need to be for a risk of confusion to exist and vice versa.

As well as searching the trademark Registers, a trademark registration company will also search other sources to ascertain whether there are any similar marks already being used and if so, what risk these may present to the application. This is because the owners of unregistered trademarks may also oppose a trademark registration application, provided that they have some goodwill in their mark. So searches of the Internet, Companies House and other sources of business information can also be useful.

In the end, the decision of whether to apply for a trademark registration is one for the business owner alone but they will not be able to make an informed assessment of the risks involved without having a trademark search conducted beforehand.

Carrying our a UK Trademark Search

In order to search for a trademark in the Uk you can either go direct to the UK Patent Office or visit one of the many online trademark companies that will carry out the search for you in return for a fee.

Carrying Out a European Trademark Search

If you want to search for a European trademark then you again have the option of using an online company or you can go direct to the OHIM and conduct the search yourself for free.

There are many online companies that will conduct a trademark search for you for a fee. ALternatively you can conduct a search yourself by going direct to the websites of the UK Patent Office or the OHIM.