It is important to register your trademark if you plan to do business in England, Wales, Scotland, or Northern Ireland. Prior to BREXIT, business owners could register their trademarks with the European Union to obtain trademark protection. Businesses seeking protection in the UK will have to file directly with the UK Intellectual Property Office, or IPO.
Getting a trademark registration is important for any business, but it is equally important to conduct pre-filing diligence before filing. Performing a trademark search is one of the most important steps before selecting a new trademark.
Why Conduct a Trademark Search When Applying for a UK Registration?
Whether you intend to register your mark in the United States, the United Kingdom, or anywhere else, conducting a trademark search is essential. A trademark search is necessary to determine if another business is already using the mark before you submit your application and pay your filing fees, giving you time to make changes.
Unlike the US, the UK Intellectual Property Office (called the IPO) may approve your trademark registration even if a similar mark already exists on their database. The examiner reviewing your trademark application will notify the owners of any similar trademarks of your filing when this occurs. Your registration can move forward if these owners ignore the notification, or they can file an opposition with the IPO. The process can be lengthy and expensive, and may eventually result in the cancellation of your registration. You can avoid this by simply conducting a trademark search and selecting a mark that cannot be opposed.
How to Search the UK Trademark Database
The UK trademark database can be accessed directly through the UK Intellectual Property Office website. You can conduct a search in a variety of ways, depending on your needs. In order to check the status of a particular pending application, you can search by trademark number or trademark owner. You should select the link for searching by keyword, phrase, or image if you are conducting a comprehensive trademark search before registering your mark.
Once there, you’ll find a drop-down menu to choose whether you want to search by word, by image, or a combination of the two. When searching for a word or words, you can choose to search for exact matches only, or for similar matches. The best way to avoid trademark conflicts is to search for both exact and similar matches. To search for an image in the database, you must select from a variety of drop-down boxes.
The results can be narrowed further by specifying specific international classes, a registration period, or the status of an existing mark. It will return any possible matches to your search, including the mark’s status, text and image (if applicable), registration date, and international class.
Consider Working with an Experienced Trademark Attorney
While the UK trademark database is designed to reveal both exact and similar matches to your mark, it may not contain all conflicting marks. In the future, this could lead to opposition to your mark. Additionally, conducting an image search can be time-consuming and tedious, and it may not be clear which images are confusingly similar.
Consider working with an experienced trademark attorney who will conduct a broad search using professional software and years of experience to identify similar trademarks registered within the United Kingdom. Your attorney will then be able to advise you on whether to proceed with your desired trademark or whether to make changes to avoid potential opposition. Often, only small adjustments are needed, but sometimes you may need to start over and create a new mark for your brand. Your attorney will assist you in drafting your application and moving through the UK trademark registration process once you have completed your search and selected a strong trademark.
Performing a trademark search in the United Kingdom
Make sure you conduct a trademark search before submitting your trademark application to the UK IPO. In spite of UK trademark law allowing similar marks to be registered, other trademark owners can oppose your registration if they believe it may cause confusion. Through the UK IPO website, you can search the trademark database on your own, but the process can be time-consuming and tedious. If you want to protect your trademark throughout the United Kingdom, you should work with an experienced trademark attorney who can help you find any potentially conflicting marks and help determine whether you should proceed or make any changes.