Why complete clearance checks before applying for a trade mark?

After months of hard work getting your business off the ground, it’s nice to get round to actually protecting one of your main assets, your brand’s name.

Trade marks can cover up to 45 classes of goods and services. Typically, they only cover a few which are relevant to the brand (it is unusual to apply for classes covering wallpaper, wine and live entertainment in the same application).

They also generally take one of two forms, either a “word mark” (i.e., “CRATE”) or a “figurative logo” (insert snazzy logo of a crate). The word mark is the strongest protection for your brand, as this will protect against others using the word, whereas the logo offers weaker protections, and most businesses change their logo over time.

But, is your trade mark available?

Ok, so you have finally picked your favourite name from your shortlist. It is tempting to just apply for the trade mark and get your application underway so you can frame the registration certificate on your wall (or put it on your fridge alongside your child’s latest masterpiece).

In all cases, it is best to do a quick desktop search of the relevant intellectual property office’s trade mark registry. The search should quickly identify if there are identical or similar trade marks already registered that could cause issues with your application.

The owners of the such marks can cause issues for your business by:

• Threatening to oppose your trade mark application.
• Formally opposing your trade mark application.
• Applying to invalidate your trade mark registration (once it has been registered)
• Sending you cease and desist letters alleging your mark infringes their registered marks.

All the above actions will cause you a big headache. They will also cost you money to defend. Above all, they will consume a lot of your time which you could otherwise focus on growing your business.

Is it really worth it?

Formal clearance checks are not always necessary. But your lawyer will flag it to you when it is. By completing a formal clearance check your lawyer can report to you which registered marks are likely to cause your application issues. You can then decide to either proceed with your application in the knowledge of those risks or go back to the drawing board for your brand’s name.

It is true that these checks will slow down your trade mark application in the short term. But the upfront investment of time and money is often worth it.

In my experience, businesses significantly increase the risk of having to fully rebrand at great cost when they come up against another party with a similar or identical registered mark that they previously had no idea about.