Trade Mark Portfolio Management – Searching

If you are reading this article, we are most likely responsible for managing your trade mark portfolio. The clearance and protection of brand names and logos, particularly as part of a global trade mark portfolio, is one of our highly regarded specialist areas of expertise. In addition to understanding Irish and EU trade mark law and practice, managing a trade mark portfolio requires a commercial understanding of the owners’ business and relevant markets, as well as knowledge of legal issues in jurisdictions around the world. At FRKelly, we are proud to be entrusted with the care of global trade mark portfolios for many of Ireland’s leading brands and businesses. In this article, we introduce you to our methodology for conducting trade mark clearance searches.

(1) Reasons for Trade Mark Searching

Creating a protectable and attractive brand is only the first step in selection. Another critical step is the trade mark clearance search whereby we determine whether your proposed brand is available for your adoption and trade mark registration. When adopting a new trade mark you must face the risk that a competitor may have registered an identical or similar mark in your product or service category (or related category) and a clearance search is the only means for determining that risk.

When we conduct a trade mark search, we assess if the client’s proposed mark is likely to be confused with earlier trade mark rights, and we sometimes have to advise that the mark is simply not available. A business that invests in launching a new trade mark without knowing whether the mark is legally available is putting that investment at risk. This is owing to the possibility of having to change the mark, sometimes after the mark is already well established and known by consumers, at the request of a registered trade mark owner previously unknown. We advise against running that risk.

(2) Planning the Search

There is no standard trade mark search, and we tailor each search to suit our clients’ particular needs and objectives. The following are some of the questions that we will ask you before planning the search:

• What is the mark to be searched? If it is a brand name, then will the name appear alone or as part of a logo? Use of a logo may involve a separate design mark search.

• What are the branded goods or services including any possible future brand extensions?

• Will the mark be used outside of Ireland? If so, where? Throughout Europe, the Far East or North America for example?

• Will the mark also be used as a domain name or corporate name also?

• What is the budget for trade mark searching?

• Examples of use such as in advertisements, packaging designs or brochures to enable us to see the mark as used or proposed to be used.

Once we have reviewed this information, we will design a suitable search strategy usually beginning with a preliminary trade mark screening search, followed by full trade mark clearance searches in specific countries or regions.

(3) Conducting the Preliminary Search

The purposes of a preliminary trade mark search, also known as a “knock out” or “screening” search is to identify obvious bars or conflicts at the earliest stage, thereby avoiding the requirement for more thorough full trade mark searches on unavailable brands. When selecting a new brand name for example, clients often provide us with lists of 10 or 20 possible names and knock out searches are used to quickly rule out or eliminate marks that are already registered by someone else. However, the fact that no blocking earlier marks are identified in a preliminary search does not mean that the subject mark is available because these searches only identify earlier registered trade marks that are identical, nearly identical or very highly similar to the proposed mark in the exact categories of goods and services of interest.

Confusingly similar marks protected for similar goods or services which may also be relevant will only be identified in full searches. In our preliminary screening searches, we use online commercial databases that contain information on trade mark registers world-wide and we will focus on the markets where our clients sell or intend to sell their products or services, whether in Ireland, the UK, Europe or further afield. If clients do not consider potential future markets in preliminary searches, then they may find themselves having to market their products and services under different brand names in different countries because they failed to plan ahead when carrying out trade mark research.

(4) After the Preliminary Screening Search

If no obstacles to a proposed mark are found at the preliminary screening stage, then FRKelly will advise on conducting “full” trade mark searches. A full trade mark search for Ireland and the UK is a comprehensive (but not exhaustive) review of the Irish, UK, EUIPO and International trade mark registers. The purpose of a full trade mark search is to not only identify earlier trade marks that are identical or nearly identical to the proposed mark, but also marks that may be considered confusingly similar to the proposed mark.

In addition, the full search will extend to goods and services that are considered similar in trade mark terms to the goods or services of the client, for example, handbags may be considered similar to shoes, although these goods are in different trade mark classes. If budget is not too much of a constraining factor, then we will carry out full searches in as many of the relevant markets or countries of interest to the client as possible. However, cost and budget is often a limiting factor, and full trade marks searches have to be prioritised by country.

For many clients, we conduct full trade mark searches in phases, starting with the most important countries and, if the mark is clear in those countries, moving on to the countries of lesser importance. In this way, if a serious obstacle is found early in one country, other full trade mark searches can be curtailed.

Depending on the particular needs and budget of the client, we will provide full trade mark searches with the assistance of our extensive network of international trade mark experts and lawyers and/or with the assistance of an international search company which will provide us with lists of identical and similar marks in the relevant countries which we analyse and assess.

(5) Searches of Non-Word Marks

New brands can include graphic elements, such as designs, characters and typefaces in addition to words and names. Furthermore, packaging, get-up and the appearance of products, as well as sounds and music can constitute registered trade marks. In addition to searching brand names or the word elements of trade marks, it may also be necessary to carry out trade mark clearance searches for non-word marks and a suitable search strategy designed for the client.

(6) Company or Corporate Name Trade Mark Defence

For Irish and UK businesses adopting new company names, it is no longer a defence to registered trade mark infringement that a trade mark is being used as a company name in accordance with honest practices. This “own name” defence has recently been removed from legislation in a bid to harmonise EU trade mark law. Therefore it now more important than ever to search new marks that are proposed to be used as corporate names.

FRKelly has been assisting clients with the clearance of new brands in Ireland and abroad for many decades and prides itself on its flexible, imaginative and cost effective approach to what can be a difficult and complex task. We are here to help so please do not hesitate to get in touch.

Mary Bleahene
Partner – Trade Marks