Trade marks

If you're thinking of trade marking your goods or services, you should first carry out a trade mark clearance search. This will allow you to see if any mark has already been registered or applied for that is similar or identical to yours, or is being used in the same class (or classes) for competing products or services.

Carry out a trade mark search

Searching for trade marks involves checking online registers and trade mark databases to ensure that no earlier marks exist and that you won't infringe on already registered rights.

You can carry out the search yourself, if you wish, using the UK Intellectual Property Office's (IPO) free tool to search for a trade mark.

A UK search will disclose both registered trade marks and pending trade marks registrations where the application process is underway.

If you wish to widen your search to other territories, you can use the EUIPO's tools to search for EU registered and global trade marks.

Expert clearance searches

If you don't want to carry out the searches yourself, you can:

• find a trade mark attorney to conduct a search for you
• get help from Invest Northern Ireland's intellectual property advisers 

When carrying out a search, don't focus solely on registered trade marks. A similar unregistered mark may already be in use and its owner may be able to protect it against passing off under common law rights.

When should you carry out the clearance search?

You should search for previously registered trade marks as soon as you decide what mark you wish to use as your trade mark. At the very least, you should carry out a clearance search before you:

• create a new product or business name or logo
• move your existing goods or services into new sectors or geographic markets
• apply to register a mark as your new trade mark

Notification of earlier rights in search reports

When you file a trade mark application with the IPO, they will notify you about earlier marks which potentially conflict with yours. This notification will not include trade marks which have expired. Expired marks can be renewed or restored up to 12 months after their renewal date.

Should you attempt to register a mark identical or similar to a recently expired mark, the owners of an earlier mark may seek to stop you from using the mark. Omitting to carry out a detailed clearance search may therefore put you at significant financial and legal risk. Read about using other people's trade marks.

What to do if a trade mark is taken?

If your search discovers a mark that conflicts with yours, you should check its status.

If the trade mark is in force and being used, you could seek permission from the existing owner to agree to your registration. If they agree, they should provide you with a letter of consent to submit to the IPO alongside your application. If they don't agree, they may choose to oppose your application.

If the mark is in force but hasn't been used in the last five years, you may be able to request the mark's removal. The owner of the earlier mark may choose to oppose this. Opposition is one of the ways it is possible to object to and challenge trade marks.

Seek professional advice if someone is opposing your trade mark registration.