Clearance searches for new brands
You have a product you want to sell or a service you want to provide and after hours of brainstorming you have final found the perfect brand name for it. What should you do now?
We highly recommend before launching any new brand, that a clearance search is performed for your new brand name. A clearance search, also known as a “freedom to operate” search, is carried out to investigate whether you can use your brand name without infringing any third-party rights. A clearance search generally involves a search of trade mark registries, and may also include other databases, such as company registers, domain name searches and general internet searches. These searches are essential to make sure that your new brand name is not already in use or registered by someone else.
A search is carried out for your brand name for the goods and/or services you intend to use the mark for.
The searches will look for any marks that are identical to your new brand name, for any goods or services. They will also identify any marks that are similar to your new brand name for the same or similar goods or services. Therefore, before the search is started, it is important to consider what goods and/or services you intend to use your new brand name for now as well as in the future.
It would be very expensive to search all of these databases for the entire world for all possible goods and services, therefore, unless budget is of no consequence, it is necessary limit the search to the particular territories of importance. Normally, these will be the countries in which you plan to sell your goods or service, where you will have your goods manufactured as well as where any competitors are likely to set up/are based.
In some jurisdictions, including the UK, it is possible to acquire unregistered rights in a mark through use. However, depending on the amount of use made of the unregistered rights and the reach of their use, then the unregistered rights may be limited to a specific geographic location. Therefore, to minimise infringement risk the clearance search should also include a search of unregistered rights in the countries where they are relevant.
As a general rule, your brand name should not be descriptive of your goods or use terms that are common within your field. In addition, translations of your new brand name should also be considered, particularly for any countries in which you are going to use your brand name.
Assuming the search results come back with no known marks of concern, then the next step is for you to register your new brand name in order to protect your mark. If the search highlights third party marks of potential conflict these can be reviewed before product launch and appropriate pre-emptive action taken to minimise risk. Such actions, may include, limiting the goods or services you use your mark for, modifying your mark, or perhaps approaching the prior rights holder to negotiate co-existence. In some cases though, you may choose to go back to the drawing board and chose a new mark, which will start the process over. By performing a clearance search before launch and registering your new brand name, you are protecting yourself and your brand name against potentially costly litigation in the future.
We always advise performing clearance searches as early as possible during the creative process so that any potential conflicts can be avoided before you have made a significant investment in a mark. It is possible to carry out knockout searches, looking for just identical marks, for a list of optional marks at an early stage to help you in this creative process.
Depending on the level of searching and analysis required, clearance search result can be obtained in 5-10 days or sooner if expedited and therefore, should not hold up the creative process significantly. A basic knockout search to screen a list of options, can be carried out in 1-2 days.
Our trade mark attorneys would be happy to assist you with clearing and protecting your new brand name, so please feel free to get in touch.