Trade Mark Searches – important notes
13 August 2019
Trade mark searches are conducted to assess the risk of infringing earlier third party rights through the use of the proposed mark. This guide includes definitions of the types of rights and searches, international searches and key limitations.
Infringement - A registered trade mark can be infringed in the following circumstances:
- When an identical trade mark is used in relation to identical goods/services to those of the registered trade mark.
- When an identical/similar trade mark is used in relation to identical/similar goods/services to the registered trade mark where there is a likelihood of confusion or association with that registered trade mark.
- Where an identical or similar trade mark is used on goods or services which are not identical/similar to those of the registered trade mark where that registered trade mark has a “reputation” in the UK.
Unregistered trade marks - A third party may already be using an identical or similar trade mark for goods or services which are the same or similar to your proposed trade mark as an unregistered trade mark, domain or business name. In these circumstances, there is a possibility that a third party might have sufficient grounds to bring an action for passing off based on their use of that trade mark. They would need to demonstrate their significant reputation in the unregistered trade mark and that the similarity between the respective trade marks is sufficient to give rise to a both a likelihood of confusion between the two trade marks and of causing them damage. These unregistered marks would not be located by the trade mark search and so the additional searches below should be considered where appropriate.
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