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 the UK (and elsewhere), substantial rights may arise through use of a trade mark. 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In addition, we will have placed less emphasis on applications/registrations which have lapsed or been withdrawn or abandoned. However, there are some circumstances in which a lapsed mark may be restored. If there is a lapsed/withdrawn/abandoned mark which concerns you, please let us know and we will advise further.
At additional cost we can also instruct searches of the companies register, 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.
Countries
Unless indicated otherwise, a UK trade mark search is limited to trade mark applications and registrations which give rise to rights in the UK. If you want us to extend the search to other countries, please let us know.
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 UK. Such applications, if and when registered, give rights in the UK dating back to the date of application and possibly earlier.
Details of such international trade mark applications are passed from WIPO to the UK Intellectual Property Office. The UK Intellectual Property 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 on our usual database.
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
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.
There is a short delay before the data is available. Therefore, recent applications and other recent events may not be covered.
The data available does not always show whether a pending application is to be back-dated, via a priority claim, to the date of an application in another country. This information is not available on application. Such back-dating could affect the effective date of the registration by up to six months.
We will not, unless you have asked us to, have searched for relevant applications in other countries. This would be expensive. It is possible for an application to be filed in the UK 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.
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.
The tobacco advertising and promotion (brandsharing) regulation 2004
The effect of this regulation is to prohibit in the UK:
- The use of a feature (e.g. a trade mark) on non-tobacco products/services where that feature is the same as or similar to one connected with a tobacco product (but only if the user has links with a tobacco producer or promoter).
- The use on tobacco products of a feature associated with a non-tobacco product/service.
N.B. The regulation only applies if the purpose or effect is to promote a tobacco product.
(There are further exceptions: for details of these and the regulation in general please see http://www.opsi.gov.uk/si/si2004/20041824.htm.)
The UK Trade Marks Registry will, as part of the trade mark application procedure, check to see whether a mark applied for is the same as or similar to a mark registered for tobacco products (and vice versa). If so, they will draw the applicant’s attention to the regulation. This will be merely advisory unless it is felt obvious that the proposed use of the mark will be contrary to the regulation, e.g. an application to register a well-known tobacco brand in respect of motor racing services. (In such “obvious” cases the application will face objection.)
Please note that we will not (unless you have asked us to) have searched for marks which might present potential issues under this regulation.
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 UKIPO 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 UK Designs
The search did not cover UK registered designs.
UK law allows for registered design protection for lines, contours, colours, shape, texture, material or ornamentation of a product or part of it.
UK design registrations 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 UK 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 UK register for potentially conflicting registered designs, please contact us immediately.