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Introduction; Use; Registration; Product Marking; Foreign Applications; Community Trade Mark (CTM) Registration; International Trade Mark Registration (Madrid Protocol); Novelty/Timing; Searches.
There are two reasons for conducting searches (I) to determine whether you are free to use a mark and (II) to determine whether you are free to register your mark.
In most countries which do not follow the common law procedures of the United Kingdom, it is normally sufficient to search only the Register to identify any conflicting marks. In the UK and the USA in particular, it is advisable to conduct a common law search in view of the risk of "passing off" against others unless, of course, you are satisfied that you have a good knowledge of the use of similar marks by your competitors.
An identical search will cover the identical word only. It is very limited. It should be used only to find the identical mark suspected to exist on the Register. It should never be used to clear a mark for use because the search will not reveal closely similar marks which could be infringed; instead a full availability search needs to be conducted for this purpose.
Common law searches are limited and therefore should not be relied upon to clear a name for use. Your own information on competitors' activities is likely to be better than anything available on a database. Tell us if you are aware of anything similar to the mark of interest and let us advise of potential problems.
The cost and effectiveness of trade mark searches overseas varies from country to country. A full search with comment is likely to cost of the order of £600. An identical search is much cheaper, but is limited; see above. However, if you wish to discover whether a name has been adopted by somebody else, with the intention of dropping the name if the result is positive, an identical search can be achieved quite cheaply either worldwide or by area, e.g. Europe. Typical costs are £800 for a worldwide search or £500 for Europe. The cost is for 1 mark in 1 class and covers only marks published since 1 January 1976. Before a mark is used a full search should be conducted in the relevant territory.
For trade marks (including service marks), passing off and licensing,
contact Ian Smith in our Bristol office.