How to Conduct a UK Trademark Search

By Josh Gerben, Esq.

If you plan to do business in England, Wales, Scotland, or Northern Ireland, it’s important to protect your brand through trademark registration. Prior to BREXIT, business owners were able to obtain trademark protections in the United Kingdom through registration with the European Union. Now, business owners seeking protection in the UK will need to file directly with the UK Intellectual Property Office, or IPO.

While obtaining a trademark registration is important for any business it is important not to overlook pre-filing diligence that should be conducted.  One of the most critical tasks to complete before finalizing the selection of a new trademark is to conduct a trademark search.

Why Conduct a Search When Seeking a UK Trademark Registration?

Whether you plan to register your mark in the United States, the United Kingdom, or any other country, it’s important to begin the process by conducting a trademark search. The purpose of the search is to determine if another business is already using the mark before you submit your application and pay your filing fees, allowing you time to make changes to the trademark if needed.

Unlike the United States, however, the UK Intellectual Property Office (known as the “IPO”), may still approve your trademark registration, even if a similar mark already exists on their registry. When this occurs, the examiner reviewing your trademark application will notify the owners of any similar trademarks of your filing. These owners can either allow your registration to move forward by ignoring the notification, or they can file an opposition with the IPO. This can result in a lengthy and expensive process, which may eventually lead to your registration being cancelled. The best way to avoid this is to simply conduct a search and select a mark that cannot be opposed by other trademark owners.

How to Search the UK Trademark Database

The UK trademark database can be found directly on the UK IPO website. There are a variety of ways to conduct a search, depending on the need. You can search by trademark number or trademark owner if you’d like to check the status of a particular pending application, for instance. However, if you are conducting a comprehensive trademark search prior to registering your mark, you should select the link for searching by keyword, phrase, or image.

Once there, you’ll see a drop-down box at the top of the page to select whether you plan to search by word, by image, or a combination of the two. When conducting a search of a word or words, you can choose to search for exact matches only, or to search for similar matches as well. It’s best to search for both exact and similar matches, as both could result in trademark conflicts later on. When searching an image, you will need to describe the image through a variety of drop-down boxes on the database.

Results can be narrowed further by indicating specific international classes, a timeframe of registration, or the status of the existing mark. The database will return any potential matches to your search, including the mark’s status, text and image (if applicable), registration date, and international classes.

Consider Working with an Experienced Trademark Attorney

While the UK trademark database is designed to reveal both exact and similar matches to your mark, it may not be inclusive of all conflicting trademarks. This could lead to potential opposition to your mark in the future. In addition, conducting an image search can be particularly tedious and time-consuming, and it may not be easy to understand which images could be construed as confusingly similar.

Consider working with an experienced trademark attorney that will conduct a broad search, using professional software and years of experience to help find any similar trademarks that have been registered within the United Kingdom. You can then work with your attorney to determine whether to move forward with your desired trademark or to make changes to the mark to avoid potential opposition. Sometimes, only small adjustments need to be made, but occasionally, you may need to go back to the drawing board to create a new mark for your brand. Once your search has been conducted and a strong trademark selected, your attorney will assist you in drafting your application and moving through the UK trademark registration process.

Conducting a Trademark Search in the United Kingdom

Before you submit your trademark application to the UK IPO, be sure to conduct a trademark search to find any confusingly similar marks. While UK trademark law allows similar marks to be approved, other trademark owners can oppose your registration if they believe it may cause a likelihood of confusion in the marketplace. You can conduct a search of the trademark database on your own, through the UK IPO website, but the process can be tedious and time-consuming. Instead, consider working with an experienced trademark attorney that will find all potentially conflicting marks and help you determine whether to move forward or make changes, in order to obtain broad protections of your trademark throughout the United Kingdom.

For additional information on UK Trademarks, visit our international UK section of our blog.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.