Searching and clearance including classification Daniel Hardman-Smart

Searching and clearance including classification Daniel Hardman-Smart – Stobbs

What is a TM search? A check for prior rights that may prevent you from adopting and using your trade mark CITMA Paralegal Course

Why Is your trade mark available: 1. for USE 2. for REGISTRATION CITMA Paralegal Course

Otherwise In the UK, you could be sued for: Trade mark infringement Passing off or face a trade mark opposition (or cancellation)

TM infringement A registered trade mark gives the proprietor the right to prevent a competitor from using their trade mark or a confusingly similar trade mark on identical or similar goods and/or services to those covered by the registered trade mark CITMA Paralegal Course

Passing off

Which could mean May be ordered by the Court to: 1. Stop using the mark 2. Destroy/repackage existing stock 3. Pay the trade mark owner (damages/account of profits) 4. Contribute towards the other side’s legal costs Cost and delay of rebranding and re-launch Potential damage to reputation/bad PR CITMA Paralegal Course

Oppositions UK: refusal of your TM (if opposition is successful) possible Award of Costs against you Other countries: Citation Cancellation CITMA Paralegal Course

When? AS SOON AS POSSIBLE! when adopting a new trade mark when launching an existing trade mark in a new jurisdiction

What? Searches are intended to locate trade mark registrations or applications covering: identical or similar trade marks and that are for identical or similar goods and services International Classification of 45 classes helps narrow down and focus results CITMA Paralegal Course

Classification To allow efficient searching of trade marks International Classification Nice Classification Administered by WIPO Nice Agreement 88 members, Committee of Experts But most countries in the world use the International Classification CITMA Paralegal Course

Goods and services Classification groups together broadly related goods and services into Classes There are 45 classes: Classes 1 – 34 are for goods (products) Classes 35 – 45 are for services CITMA Paralegal Course

Classification is important Searching Filing applications Watching

Other Other classification systems Reclassification

TMclass EUIPO developed tool for acceptable terms for specifications of goods/services Retail services, wholesale services, installation and repair – need specifics

Madrid Goods and Services Manager (“MGS”) WIPO’s tool Useful for checking designated countries in an International trade mark application May help avoid Provisional Refusals CITMA Paralegal Course

Give a general idea of what is in each class Class headings Some are broad and will cover pretty much everything in that particular class Others are not UK & EU now have “means what it says” approach CITMA Paralegal Course

Where? UK: UK Register EUTM Register International Register (UK and EU designations) Common law

Searching - EUTM EUTM Register International Register

Where? US: US Federal Register International Register (US designations) State Registers Common law

Types of TM searches Word mark search Device (logo/figurative mark) search Common Law search Word marks Full search Screening search (identical / knockout / quick and dirty)

Class 32: Beers Class 33: Beverages (alcoholic), except beer Class 32: Beer and brewery products. Class 33: Alcoholic beverages, except beer CITMA Paralegal Course

GECKO Class 9: Head protection; helmets for use in sports; gloves, namely protective gloves. Class 25: Sportswear Class 28: Swimming jackets; gloves, namely sports gloves in particular golf gloves, baseball gloves, boxing gloves, fencing gauntlets, goalkeepers gloves, gloves for games. CITMA Paralegal Course

BOOBOO BOOHOO Class 25: Women’s clothing; footwear Class 25: Articles of clothing; footwear; headgear. CITMA Paralegal Course

More difficult to do screening searches AI developments Device elements of trade marks are classified using a numerical system (Vienna Classification) You can search using this but it may throw up a lot of results Device marks

3.1.4 Tigers or other large felines 3.1.21 Animals of Series I bounding CITMA Paralegal Course

Other types of searches Pharma in-use Company name Domain name Social media Registered design CITMA Paralegal Course

Searching tools UKIPO e-search plus TMview Madrid Monitor Global Brand Database National IP Offices Commercial search companies Foreign associates CITMA Paralegal Course

CITMA Paralegal Course

CITMA Paralegal Course

Cancellation Consent Purchase (No action by TM owner) Overcoming problems

Limitations of TM search Errors Delay Priority Well-known marks Common law rights CITMA Paralegal Course

Practicalities Time Cost Usefulness of screening searches EU and “EU 4/5”

Activities If you find it helpful, there are some activities you can try at the end of your handout. Do them on your own or do them with your peers CITMA Paralegal Course

Any questions?