The title of this article is a commonly asked question by people and businesses looking to either start up or to develop their trade mark portfolios. The purpose and necessity of the pre-filing search has been summarised below.
Why is it needed?
Before filing an application for your proposed trade mark, it is highly recommended that you undertake a search to gain an insight as to a) how your application will be received by the relevant Intellectual Property Office and b) any registered marks that are similar or identical to your proposed mark as well as any other existing entities which may hold unregistered rights.
What information will the search provide?
When it comes to a trade mark application, in the UK (as well as most other jurisdictions) your trade mark application will be examined in two stages.
STAGE 1 (Absolute Grounds for Refusal)
The first stage involves a trade mark examiner reviewing the mark and ensuing it complies with the conditions which it needs to meet. The examiner will assess:
1) whether the mark is wholly descriptive in nature; and
2) whether the proposed mark is devoid of distinctive character.
These assessments are made in conjunction for the goods and services applied for. Our trade mark search will highlight the risk level of your proposed mark on a risk scale as follows:
- Low
- Medium to low
- Medium
- Medium to high
- High
We will inform you of the reasoning behind our choice of risk level and we will suggest ways in which to mitigate it if such advice is appropriate (as this will differ from mark to mark).
If your mark is deemed high risk at this stage, then we may discuss the Right Start Application Scheme with you. Alternatively, you may decide to amend or change your proposed mark.
STAGE 2 (Relative Grounds for Refusal)
Once and if your application is approved under the Above Grounds, the mark will pass to the second stage. This is the process whereby your mark is published for opposition purposes. This gives third parties the opportunity to object to your mark.
The advanced search results will give you a very good indication of what other registered marks are out there to avoid any unpredicted objections to the registration of your mark.
Based on our findings, we will provide you with a risk level as per the risk scale on shown above. This will be accompanied by our review and advice on the two marks that are the most similar to yours amongst those identified in the search report. We will highlight the degree of similarity and compare their registered goods and services to that of yours.
In the advanced search pack for the UK or EU, you will be provided with the following results:
- All similar and identical marks in the relevant trade mark registry, all of which may have grounds to block your trade mark application;
- Companies House Check;
- Internet Search;
- Domain Search; and
- Comprehensive Report and evidence of our findings.
Disclaimer:
Please note there is a degree of risk with every application and a search conducted by the relevant Intellectual Property Office may establish different results.
While we cannot guarantee the outcome of your application, the advanced search report gives you the best idea of what is out there before filing.
Where can I get a trade mark search?
Here at the Trademarkroom we offer a very basic free UK trade mark search which will highlight any identical trade marks that are registered in identical goods and services. The free search is very basic and focuses on identical matches only.
Alternatively, we do offer an advanced search report as follows:
- £175.00 plus VAT (£210.00 including VAT) for the UK; and
- £175.00 plus VAT (£210.00 including VAT) for the EU. [1]
We offer searches in every country of the world. Details of search fees and application fees can be found on our website under the ‘Global Trade Marks’ tab.
Please note that there is no option for a ‘Worldwide Search’. Each country will need to be done separately, however we may be able to offer a discount depending on the number of countries that you would like searched at once.
How do I proceed?
If you would like to enquire about a search, simply contact our friendly team on the details below. In order to carry out the search, we will need details of the trade mark, details of the goods and/or services that you wish to provide under it and settlement of the fee.
Once we are in receipt of monies, we can provide you with the advanced search report within 24-48 hours. Please note that searches other than the UK and EU may take longer.
Tel: 02380 000190
E-mail: tmr@trademarkroom.com
[1] Fees correct as of January 2023. Subject to increase in future.
