Skip to content 
It is one of the most common assumptions we encounter when speaking to prospective trade mark applicants:
“I searched the register and nobody has registered exactly the same name, so surely my application will be accepted?”
Unfortunately, it is not quite that simple.
Finding no identical trade mark is certainly a positive starting point, but it does not mean that your proposed mark is automatically available for registration. Trade mark clearance involves considerably more than typing a name into the UK Intellectual Property Office (“UKIPO”) search facility and looking for an exact match.
At The Trademarkroom, we recommend carrying out a proper assessment of the potential risks before committing to an application — and, ideally, before investing significant sums in a new brand.
Identical and similar are two very different things
An earlier trade mark does not necessarily have to be identical to cause difficulties.
Under section 5(2) of the Trade Marks Act 1994, an application can potentially conflict with an earlier trade mark where the marks are similar and the relevant goods or services are identical or similar, if there is a likelihood of confusion on the part of the public.
That means searching only for your precise proposed name can give you a false sense of security.
Imagine, for example, that you wanted to register:
BARKORA
You search the register for “BARKORA” and find nothing.
That does not necessarily mean the coast is clear.
There could potentially be earlier registrations such as:
BARKORA → BARCORA → BARKOR → BARKORA PETS
Whether any particular earlier mark actually presents a problem will depend upon the circumstances, but the point is that a clearance search needs to identify similar marks, rather than simply identical ones.
How is similarity assessed?
Trade marks are generally assessed as a whole, taking account of their:
- visual similarity – do they look alike?
- aural similarity – do they sound alike?
- conceptual similarity – do they convey a similar idea or meaning?
The UKIPO’s examination guidance confirms that marks should be compared in their totality, while recognising that consumers’ recollection may focus particularly on their dominant and distinctive components.
This means changing a letter, altering the spelling or adding a relatively weak word to an existing brand will not necessarily be enough to avoid a potential conflict.
For example, adding words such as “UK”, “London”, “Group”, “Online” or another descriptive term may not necessarily distinguish a proposed mark sufficiently from an earlier right.
The goods and services matter too
Trade mark searches are not simply about comparing names.
You also need to consider what the respective trade marks actually protect.
Trade marks are registered in relation to specified goods and services. When considering potential conflicts, factors such as the nature, purpose and method of use of the respective goods or services, and whether they are complementary or competing, may be relevant.
This is why finding the same or a similar name somewhere on the register does not automatically mean that you cannot register yours.
Two identical or similar marks can potentially coexist where they operate in sufficiently different commercial areas.
Conversely, two marks which are not identical can potentially cause problems where the businesses operate in the same or closely related sectors.
This is one reason why the classification and specification of goods and services should not simply be treated as an administrative part of the application. It can have a significant impact on both the prospects of registration and the eventual scope of protection.
What does “likelihood of confusion” actually mean?
One of the central questions is whether consumers are likely to be confused about the commercial origin of the relevant goods or services.
The UKIPO describes the assessment as a global comparison. There is no single factor which automatically determines whether confusion exists. Instead, factors including the similarity of the marks, the distinctiveness of the earlier mark and the similarity of the respective goods and services are considered together.
Importantly, these factors are interdependent.
A relatively high degree of similarity between the goods or services may mean that a lower degree of similarity between the marks is sufficient to create a problem, and vice versa.
A proper trade mark search therefore requires considerably more analysis than simply asking if an identical mark is registered.
The UKIPO finding an earlier mark does not necessarily mean immediate refusal
There is another important feature of the UK trade mark system which applicants often misunderstand.
The UKIPO conducts a search for earlier UK rights during examination. Where potentially conflicting earlier marks are identified, they may be brought to the applicant’s attention in the examination report.
However, the UKIPO does not simply refuse the application because it has identified an earlier similar trade mark. If the applicant proceeds, the application may move forward to publication and relevant earlier rights holders may be notified, giving them the opportunity to oppose.
This distinction is important.
An application being accepted and published by the UKIPO does not necessarily mean that there are no third-party risks.
An earlier rights holder may still decide to oppose the application.
What if the earlier business has not registered its trade mark?
This is another potential trap.
Searching the trade mark register tells you what is on the trade mark register. It does not necessarily tell you about every business that may have relevant earlier rights.
UK opposition proceedings can involve earlier rights which are not registered trade marks. The UKIPO’s current opposition guidance expressly recognises that an earlier right relied upon under section 5 does not necessarily have to be registered.
In particular, an established business may potentially have rights arising through the law of passing off.
For this reason, depending upon the circumstances, sensible brand clearance can involve looking beyond the trade mark register at company names, websites, search engines, domain names, social media and the wider marketplace.
Search before you build the brand
The best time to discover a trade mark problem is before you have invested heavily in the brand.
Consider the cost of:
- designing a logo;
- purchasing domain names;
- building a website;
- printing packaging;
- manufacturing products;
- creating signage;
- launching social media accounts;
- commissioning advertising; and
- developing customer recognition.
Discovering six months later that an earlier rights holder objects to your brand can be significantly more expensive than carrying out appropriate checks at the beginning.
A trade mark application should therefore form part of the brand-development process rather than being something considered only after the business has launched.
How The Trademarkroom can help
At The Trademarkroom, we assist businesses and individuals with the trade mark process from the initial clearance stage through to registration.
We can help assess whether your proposed trade mark is likely to encounter problems, identify potentially conflicting earlier rights, advise upon the appropriate classes and specification, prepare and file the application and assist if objections or oppositions arise.
So, if you have searched the register and found no identical marks, that is good news — but don’t press “file” just yet.
The more important question is:
“Is there anything already out there which could prevent me from registering or safely using this brand?”
That is the question a proper trade mark clearance exercise should answer.
A little investigation at the beginning can help avoid an expensive branding problem later.
The Trademarkroom – helping you protect the name behind your business.
This article is provided for general information only and does not constitute legal advice. The registrability of a trade mark and the risk presented by earlier rights will depend upon the particular circumstances of each application.
