Every now and then, we are approached by a business that has received a letter from a third party threatening legal proceedings if it does not cease the use of a new brand and/or withdraw a trade mark application. Such a development obviously places the business in a real dilemma; does it continue with the new brand and risk becoming a defendant to infringement proceedings, or drop the brand and lose the investment made in developing it? It can also be very embarrassing to drop a brand after it is launched, and then there is the cost associated with destroying goods/packaging and changing marketing literature/websites.
It is advisable for businesses, as part of the process of developing a new brand, to consider carrying out a full availability search to determine if they are free to use the brand in the UK or elsewhere. Such a search helps businesses to navigate around any potential issues and assess the risk of facing any challenge to the use and registration of a trade mark in a particular jurisdiction. Carrying out a Google search is not sufficient as it would not reveal, for example, any registered trade marks not currently being used.
Our recommendation to any business carrying out trade in the UK or EU under a new brand is to carry out a full availability search consisting of:
- A search of the UK trade mark database for any identical or similar marks;
- A search of the EU trade mark database for any identical or similar marks. This is the single EU trade mark and not a search of national trade mark registries in other EU member states;
- A UK common law search to identify any identical unregistered marks being used in the UK.
This search will give businesses a high degree of confidence on whether or not there are any conflicting marks that have been registered or being used in the UK. If a business is planning to use the brand in other EU members states, it may be advisable to consider a further trade mark search in that member state which would cover, for instance, a search of the relevant national trade mark database.