IP Precautions Part One: Trade Mark Clearance Searches

The intellectual property right predominantly associated with brand protection is trade marks. A trade mark is a badge of origin used in the course of trade to denote the origin of goods and services supplied under the sign. It is a registrable IP asset and steps should be taken to register your mark as soon as possible in the territories you seek protection, if your mark meets the registrability criteria which will be set out in the respective national legislation.

Prior to committing to a brand name, thorough clearance searches should be executed to ascertain whether a name is already in use, that may infringe third party rights. These third party rights can be registered (on the trade mark register) or unregistered. An unregistered trade mark will have goodwill attached to it which accrues from the moment customer-facing trade commences.

The UK Trade Marks Act 1994 (TMA) provides extensive rights to holders of both registered and unregistered rights holders against future registrations, i.e. s5 TMA sets out the ‘relative’[1] grounds for refusal of registration of a mark where it conflicts with an earlier mark.

Clearance Search

The first step prior to applying for a mark is to conduct searches of the trade mark registers at the UKIPO for UK marks; WIPO database and TMview to search for international marks. It is prudent to instruct a trade mark search specialist) to conduct full clearance searches pre-application, because the registers’ databases may only pick up identical or highly similar marks.

A full clearance search can aid in revealing if the mark is free to use and if there are any existing registered rights holders. Existing rights holders may challenge a subsequent mark by raising an opposition (on relative grounds based on their ‘earlier mark’[2]) during the opposition phase or post-registration, by making an application for a declaration of invalidity.

Note that a clearance search does not eliminate risk of future challenge entirely. The register will only reveal registered rights holders of identical or similar marks meaning that there may be trading entities with earlier unregistered rights by means of copyright, design rights and/or unregistered trade marks, referred to as ‘earlier rights’[3]. Unregistered rights holders can bring an action for passing off or potentially invalidate[4] a mark post-registration.

Infringement

If you infringe the rights of a third party, the injured party could be entitled to:

Damages or an account of profits;
Delivery up/destruction of items bearing the infringing mark;
An injunction;
Liability for both sides’ legal costs
A finding of infringement may also inevitably involve a rebranding exercise which can be commercially damaging in itself. Aside from the associated expenses involved in the execution of a global rebrand, the exercise could have a detrimental effect to both trade and reputation/goodwill, the longer it is left.

Case Study

A recent example of a possible failure to conduct an adequate clearance search is when Facebook, changed its name to “Meta” in October 2021. A search of the USPTO trademark database would have revealed that Meta PC, an Arizona company, filed a trade mark application for “Meta” for computer-related goods, two months prior to Facebook’s application. Further, Meta PC noted on their application that they have been using the mark since November 2020.

It has been reported that Meta co-founders Joe Darger and Zack Shutt are willing to sell the trade mark to Facebook but for no less than $20 million, which is not small change not even to the likes of Facebook. Facebook’s trade mark application for “Meta” filed on 28 October 2021 is extremely lengthy and has been filed in classes 9, 28, 35, 38, 41, 42 and 45 with specifications varying from “legal services”; “decorations for Christmas trees” and blockchain/cryptocurrency to the more conventional “social networking” and “artificial intelligence software”. Based on how wide Facebook has cast its net, this suggests that this won’t be the last of the disputes arising from their name change.

Co-existence

If clearance searches reveal proprietors of earlier rights and you do not wish to change your name, you could approach the proprietor of the earlier right to open up negotiations in an attempt to reach an agreement to co-exist. Co-existence agreements are often used to settle trade mark disputes where the circumstances are defined in how the parties can use their respective marks. This could involve carve outs of specifications of the goods and services or other restrictions, such as territorial and/or type of use. However, co-existence agreements are not without their risks, as can be seen in the in the long-running dispute between Merck KGaA and Merck Sharp & Dohme Corp in relation to use of the ‘Merck’ name[5]. The judgement can be found here.

Comment

Failing to conduct thorough clearance searches can have far-reaching and costly implications for your company and/or brand if your mark infringes on third party rights. It is important that companies conduct comprehensive clearance searches as a matter of due diligence, prior to filing an application to limit issues in so far as is possible. As explained, there are some situations where clearance searches can be evaded, for example when an entity engages in a filing strategy which involves first filing in a lesser-known territory overseas and then claims priority which precedes your application, a co-existence agreement may be a solution. If you enter into a co-existence agreement, the Merck dispute highlights the importance of including review provisions of the terms of the agreement which you should review regularly as part of your IP audits.

[1] s5 TMA

[2] s6 TMA

[3] s5(4)(b) TMA

[4] s47 TMA

[5] Merck KGaA v Merck Sharp and Dohme Corp [2020] EWHC 1273 (Ch)