The Importance of Trade Mark Searching

23 Jun 2022
It’s difficult to overstate the importance of trade mark searching.

There’s a decent argument that it’s the single most important step in the entire trade mark protection process.

Trade mark applications are often made at the outset of a brand – perhaps on the launch of a new business, launch of a new product or sometimes in the context of a corporate rebrand. Whatever the reason, it is critical to have a proper trade mark search carried out at an early stage and well before the business has committed to the new brand.

Too often searches are omitted altogether or carried out too late in the process, in some cases after the business has committed to the new brand, often at considerable cost. The results can be disastrous, resulting in prolonged and difficult disputes which can have significant impact on the company’s business. In some cases, the issues become so serious that the brand has to be abandoned entirely.

Carrying out trade mark searches is therefore an essential component in good business management. Here is our suggestion of a process which offers a defined path to trade mark protection and avoids all too common pitfalls:

  1. Carry out searches as early as possible in the brand creation process.
  2. Ideally conduct the searches when the business has a shortlist of, say, three or four potential brand options.
  3. Carry out ‘knockout’ searches on the shortlisted marks- ie. abbreviated searches designed to identify potential runners and eliminate any “red flag” options.
  4. In tandem with the knockout searches, conduct online and common law searches to identify potential unregistered uses of the proposed brand (Note: Companies House has no relevance to trade mark protection!)
  5. Once steps 3 and 4 are completed, carry out in-depth trade mark searches for the chosen brand(s) in all geographical territories of interest.
  6. Ensure you choose someone suitably qualified and experienced to carry out your searches. (Not everyone offering trade mark searches meets those standards).
  7. Assuming the above steps identify a winner, commit to the new brand and start the trade mark application process, ensuring you push the trade mark application out to every relevant territory internationally.

If you follow the above process, in that order, you will give yourself a great basis for protecting and growing your brand – probably the single most important asset your business will ever own.

If you need any guidance concerning trade mark searches, in the UK or internationally, or the trade mark preparation and filing process, please get in touch.