Assessing whether a trade mark is available for use generally involves establishing whether:
a) Your use of your proposed trade mark is likely to pass off your goods/services as those of others; and
b) Your use of your proposed trade mark is likely to infringe the registered trade mark rights of another organisation
The answer to point a) can often be established by your own knowledge of the trade and internet searching, although we could run more formal trade mark searches to find details of trade marks in use in the UK or elsewhere, if desired.
The answer to point b) requires some in-depth searching of the trade marks register, which is best conducted and advised on by an experienced trade mark attorney. It is possible to conduct some limited trade mark searching using free of charge resources available at www.ipo.gov.uk. These searching facilities are useful for highlighting the existence of identical trade marks. However, trade mark registrations can be infringed by use of a similar trade mark to that registered – they do not have to be identical. The legal tests for determining whether one trade mark is similar to another are complicated and so prior to commencing use of, or seeking to register a new brand, we do recommend that a comprehensive search is conducted, which picks up all trade marks which are similar to the trade mark you wish to use, and that an experienced attorney analyses those results and provides you an opinion on the risks you could face, should you proceed to use/register the trade mark in question.
Because trade mark registrations are generally obtained on a national basis, if you intend to trade outside of the UK, additional searches would be recommended in all commercially significant overseas markets.
For advice on the availability of your trade mark and assistance with trade mark clearance searching, please get in touch to speak to one of our trade mark attorneys.