THE TRADE MARK SEARCH
Before you read the search report, we would strongly recommend that you
take a few minutes to read the guidance below which will provide you with
useful information about the trade mark search undertaken and the
registration process before the UK Intellectual Property Office, Trade Marks
Registry.
We will conduct a trade mark search using specialist software which will
provide fast and up-to-date search results together with the skill and
experience of our trade mark team we will endeavour to identify those
existing trade marks which may cause problems further down the line.
Please note that the trade mark registries do not provide any guarantee either
to the accuracy of their databases or publications to anyone.
What the Trade Mark Search Does Not Include
A search has not been made, and cannot be made, against the following forms
of registered and unregistered intellectual property rights:
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
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Unregistered trade marks (i.e. protection of goodwill);
Copyright;
Design rights;
Registered designs.
What the Trade Mark Search Includes
The trade mark search will identify registered, advertised, pending, new
applications, abandoned and refused trade marks which remain on the trade
mark registries database. We will conduct a search against the following
databases:
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
UK Intellectual Property Office, Trade Marks Registry; and
The Office for Harmonisation in the Internal Market (OHIM) – the
registry for Community Trade Marks.
You may be aware that all 27 member states of the European Union can file
for what is known as a Community trade mark which offers trade mark
protection to the proprietor in all member states of the EU. As this includes
the United Kingdom a search before OHIM’s Trade Mark Registry must be
undertaken in order to identify any conflicting registered or pending trade
marks.
As a result of this there will always be an element of risk that a third party has
registered or unregistered rights other than trade mark rights in a logo or trade
style which has not been identified in the trade marks search. A brief search
will be made using online search engines in order to identify any competitors
within the UK using a similar or identical trading sign.
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CLASSIFICATION OF GOODS AND SERVICES
An important aspect of the trade mark search is to identify those using
identical or similar signs in identical or similar markets as you. These will
pose the most threat to any future application/use of the proposed trade
mark.
Your marketplace will be conveniently ‘housed’ within 1 or more of the 45
Nice classifications. Classifications are worded widely for the purposes of
the search in order to identify any registered or pending trade marks within a
similar marketplace. These may not necessarily be identical products but are
nevertheless in the same ‘marketplace’.
For the purpose of the search, we will identify any similar mark which is in
the area of your prospective classification(s), in addition to a general search
against all classifications.
If you decide to proceed with filing the proposed trade mark, we will need
to define the classifications to suitably offer you the protection within the
marketplace. Consideration ought to be given not only to current business
activities but also those likely to be offered within the next five years.
Goods
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
16.
17.
Chemicals
Paints
Cleaning Products & Cosmetics
Industrial Oils
Pharmaceutical & Veterinary Products
Metals
Machinery
Tools
Computer & Electrical Products
Medical Instruments
Lighting, Heating & Cooking
Vehicles
Firearms
Jewellery
Musical Instruments
Paper and Printed Materials
Rubber
Services
18.
19.
20.
21.
22.
23.
24.
25.
26.
27.
28.
29.
30.
31.
32.
33.
34.
Leather
Non-Metallic Building Materials
Furniture
Household Goods & Glass
Ropes, Nets, Sacks & Bags
Yarns & Threads
Fabrics
Clothes
Ribbons, Buttons, Pins & Needles
Floor Coverings
Toys, Games & Sporting Goods
Fish, Meat & Processed Foods
Staple Foods, Spices & Condiments
Agricultural Produce
Drinks & Beers
Alcoholic drinks (except Beers)
Tobacco & Smoking Goods
35.
36.
37.
38.
39.
40.
41.
42.
43.
44.
45.
Advertising & Business
Financial Services & Estate Agents
Building & Construction
Communications
Transport & Storage
Treatment of Materials
Education, Entertainment & Sports
Computer & Scientific Services
Restaurants & Hotels
Medical, Beauty & Agricultural Services
Legal, Security, Personal & Social Services
THE APPLICATION PROCESS
Re-brand if identical/similar marks identified
Trade Mark Search
File application with UKIPO
Examination report
Mark initially refused
Mark initially accepted
Earlier owners notified (if similar)
File response to overcome objection
Mark refused
Publication in Trade Marks Journal
Opposition raised, opposition procedure initiated
Mark refused
Mark Accepted
Certificate issued
THE REGISTRATION PROCESS
The trade mark registration process is governed by the Trade Marks Act 1994
(the ‘Act’) and the Trade Marks Rules 1996. Upon filing the application at
the UK Intellectual Property Office, Trade Marks Registry a Trade Marks
Examiner will be appointed to ensure that your proposed trade mark complies
with section 3 and 5 of the Act.
imaginative thought or marks which indicate the kind, quality, quantity,
intended purpose, geographical location or time of production. Words, logos
or other forms of indicators which have become customary language within
your marketplace and are being commonly referred to by your competitors
will also fail under this section of the Act.
It is important to note that despite the guidance of the Act and our own
assessment of the proposed mark, this is not in itself any guarantee of its
successful registration or otherwise. Much will depend on the particular
Examiner assigned to examine your proposed mark. The Examiner will take
into consideration his/her own thoughts and interpretation of the Act and
subsequent law as well as the Trade Marks Rules and Trade Mark Manual
when considering the suitability of your particular application. The
Examiner’s experience before the Registry will also be an important aspect to
take into consideration. Therefore such a subjective methodology can
sometimes result in an uncertain and ambiguous system of registration.
Marks which are also filed with the intention of preventing a legitimate
owner the opportunity to secure a mark which reflects its business mark will
also be refused. We have assessed the distinctive character of your proposed
trade mark against the products to which it will be applied. This advice has
been set out in the search report itself.
Nevertheless where objections are raised by an Examiner, we will be granted
an opportunity to appeal the decision and where necessary make
representation at an Oral Hearing. We will discuss this with you in more
detail if such circumstances arise.
Absolute Grounds for Refusal (section 3 of the Act)
An Examiner will assess whether your proposed trade mark has sufficient
distinctive qualities so as to function as a trade mark i.e. that it distinguishes
the goods/services which you offer from those of your competitor(s). Marks
which fall foul of this section are marks which are generic or lack any
Relative Grounds for Refusal (section 5 of the Act) and Opposition
Proceedings
An Examiner will conduct a trade mark search at the UK, EU and WIPO
trade mark registries to identify any existing identical or similar registered or
pending trade marks which may be cited against your proposed trade mark.
The owners of these marks will then be given the opportunity to oppose the
application during what is known as the ‘publication stage’ which lasts for a
period of two months.
The Examiner will notify the owners of earlier UK marks automatically and
any owners of EU marks where they have opted in to the notification service.
Therefore, it will be for the holder of the earlier mark to seek to block the
application if they so wish. This is intended to ensure that applications will
only be blocked where they affect others’ trading interests.
Instances where an opposition against your mark may be brought will be as follows:
Type of Mark
Goods / Services
Opposition
Identical
Identical
Opposition raised – mark is likely to be refused
Similar
Similar
Opposition raised if likelihood of confusion
Identical
Similar
Opposition raised if likelihood of confusion
Similar
Identical
Opposition raised if likelihood of confusion
The purpose of the search report is to identify marks which may fall within
any of the above scenarios. We will take into consideration the similarity of
the marks and the products and assess whether an opposition will be raised
based on the basis that there exists a likelihood of confusion on the part of
the relevant public.
The Act also protects marks with reputation where your proposed mark
would take unfair advantage or be detrimental to the distinctive character of
the earlier mark. This will apply even if the products are dissimilar. As such
action can only be taken where the earlier mark has reputation within the UK
market the Examiner will not raise this as grounds for objection.
An opposition will generally speaking be raised by those who have earlier
registered or unregistered rights. In the main, oppositions are raised by those
who have earlier registered trade mark rights.
Unfortunately, if an opposition is raised against the proposed trade mark, it
will substantially delay the application process and you will be required to
enter into opposition proceedings. The burden of proof will be on the
opponent to show that the marks are conflicting (under relative grounds).
However, you are advised to ensure that you keep all documentation which
is associated with the sales, marketing and advertising expenditure as well
as evidence of first use, in the unlikely event that an opposition is raised
against your proposed trade mark.
Opposition proceedings vary depending on the facts and circumstances of
each case. Should an opposition be raised against your proposed trade mark,
we will advise you accordingly.