Before filing a trade mark application or using a mark, it is advisable to conduct independent searches on the relevant official Register (or Registers if more that one territory is of interest). Whilst these searches are not compulsory or necessary in order to file a trade mark application, it is certainly a useful tool to establish whether or not there are any earlier identical or confusingly similar marks that may bar your own use or registration for the desired mark.

Independent searches available for new marks include:

1)      Identical search – this is a coarse filter looking for identical marks in identical goods or services only; or

2)      Full availability search – this looks for both identical and confusingly similar marks in identical/similar goods or services.

In general, an identical search is great if you have a variety of marks, as it can reduce the list significantly, or if you have already been using the mark unregistered for a period of time and do not wish to change it and full availability searches are recommended for new marks that have not yet been put to use and can be changed should a conflicting mark be identified. However, ad-hoc advice on the best searching strategy is strongly recommended.

It is also possible to conduct a proprietor search in order to review the marks of your competitors. Again, a useful tool to ensure that you do not step on anyone’s toes and that they are not straying too close to your own marks.

Whilst not exhaustive, it may also be advisable to check trade directories and the Internet against the possibility of existing trade marks which are in use and enjoy protections but are not registered.

Charlotte Blakey   14 November 2012