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What kind of analysis is involved in the searching process and what factors are considered?

Once we receive the full availability search data from the specialist search provider, we then assess each earlier trade mark which may pose a risk using the following sequential analysis –

Stage 1 – Assessment of the earlier right

  1. Are the marks identical or similar?
  2. Are the goods and services identical or similar?
  3. Is there a likelihood of confusion in the marketplace?
  4. Will the owner of the earlier right be notified of your application by the UKIPO?

Stage 2 – Consequences of proceeding with your mark

  1. Can the earlier trade mark technically block your trade mark application and if so, in respect of which goods and services?
  2. Can the earlier trade mark technically cause an infringement risk to the use of your mark and if so, in respect of which goods and services?

Stage 3 – Mechanisms for overcoming problems

  1. Are there any defences available to you?
  2. Can you attack the earlier trade mark to ensure you are free to use and register your own mark in respect of your core goods and services, on the basis of the various options available under UK and EU law?
  3. What are your alternative commercial options readily available to help you ensure that you are free to use and register the trade mark and what can you do to leverage and improve the situation?

We always draw a clear conclusion to the entire searching exercise as a whole, so you know exactly where you stand – we do not sit on the fence.

From the report, you will be in a position to assess the level of risk in proceeding with an application in connection with potential third party objections. You can decide whether to assume or reject that level of risk.

Who conducts the Full Clearance Search and what is the process?

Trade Mark clearance searching is a complex process involving the assessment of technical data.

The accuracy of this report is very important for the client because it forms the basis of the decision whether or not to apply for a Trade Mark and launch a brand. The accuracy of the report is equally important for our firm because may form the basis of a guarantee to register a Trade Mark.

In light of these two factors, we ensure that the most watertight and comprehensive process and strategy is employed in order to achieve the right results.

Step 1

 

We instruct and outsource the data collection to leading search providers where the preliminary selection of earlier rights is undertaken by expertly trained Trade Mark search specialists and performed in conjunction with intelligent search system software.

This ensures that we are provided with reliable and complete information and that we are aware of every perceivable earlier Trade Mark which may be visually and phonetically identical or similar to the mark which is the subject of the search, in relation to identical or similar goods and services.

The databases we consulted are updated daily with newly published Trade Marks. This gives you the greatest possible guarantee of an accurate result. Once the initial report is clear and complete we are then provided with all discharge information to conduct a thorough legal analysis of the data.

Step 2

 

Our Trade Mark practitioners review and analyse all the data to assess which earlier marks may pose a risk or cause an obstacle to the successful registration of your mark. We also provide you with a comprehensive, concise and easy to understand report on whether your mark is registrable, and how to move forward.