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Clearing and registering a new mark

By Sarah Chatterley.

We always recommend to our clients that they conduct a thorough investigation before adopting a new mark. In an ideal world this would be when they are thinking of a new brand, but often we are asked to check marks out just before the products are launched! There are good reasons for making a trade mark search one of the first things you do when looking for a new brand.

Conducting searches right at the outset can of course avoid the additional expense of rebranding and all the related costs such as reprinting stationery, packaging, labelling and advertising, should the search throw up a prior right which may be problematic, or worse, if the mark is put into use and a third party complains that it is infringing their rights. It can also mean that your client does not pay for a trade mark application which is never likely to succeed.


We offer a number of options to clear trade marks before they are put into use in the market place and/or before a trade mark application is filed to register them. Depending on budget we can search for identical marks only, those that are similar, and those that include certain terms. For a comprehensive search relating to the UK we also offer searches of other sources of prior rights, eg internet use, domain name registrations and company name registrations.

If a mark is to be launched in a foreign territory we liaise with you and instruct our associates on your behalf. This is a streamlined way of having only one point of contact for any number of trade mark investigations and applications if a brand is being adopted in a number of countries. We instruct the associates and report the results to you (or your client if you prefer this option).

Once search results have been received and reported to your Client, we can then instruct associates to file the necessary applications, taking into account any prior rights raised by their searches, eg with carefully worded specifications to sidestep and conflicts with prior rights. We are also able to file and prosecute applications ourselves before the UK Intellectual Property Office (UKIPO), the Community Trade Mark Office (OHIM) and the World Intellectual Property Organisation (WIPO) in relation to International Registrations.

Please do contact us to discuss any IP services required by your Client. We are sure that we will be able to assist you.


This news item may contain information of general interest about current legal issues, but does not contain legal advice.