Trade Mark Clearance Search

After watching a very near collision, when a car decided to overtake a bus, two cars and the tractor they were following at the start of a bend in the road, I was reminded of the advice given by my driving instructor to look for reasons why you should not overtake.  

Oncoming traffic, an upcoming bend or chevrons in the road, inconsistent swerving and speed in the car in front, an impatient driver behind, could all increase the risk of an accident occurring. Only if the risk is low should the attempt to overtake be made.

As a trade mark attorney, I have found myself giving similar advice when conducting trade mark clearance searches.  

What does a clearance search tell me?

A clearance search is conducted to give the client warning about potential obstacles to adopting a brand so that they can assess the risk and decide whether to, metaphorically, put the brakes on and look at other options, or push down hard on the accelerator, adopt the brand and launch onto the market.

I empathise with the business in a Dilbert cartoon when a marketer starts off with some great trade marks but after conducting a clearance search finds them all taken. He moves onto some not-so-great marks only to find they are also taken.  

Finally, several clearance searches later, they adopt a trade mark which is a “combination of grunts and shrieks” which “sounds like a monkey passing a kidney stone”.

Putting a potential trade mark through a clearance search can be frustrating, particularly when you create a mark that you absolutely love but then potential issues are found, but not doing so can be the death knell on a new product or service.

What is the value of clearance search?

Understandably, most new businesses try to save money where they can. However when it comes to your brand, particularly the signs which will identify your product and the symbol of the quality and value of your goods or services, it is a false economy to skimp on having a clearance search conducted.  

The old saying goes, “a stitch in time saves nine” and that is how to look at the costs involved in having a clearance search conducted.

Many products are launched onto the market only for a cease-and-desist letter to be received necessitating the re-brand of the product.  

Loss of revenue, loss of reputation, loss of goodwill together with the cost of new signage, advertising materials, domain names, changes to social media accounts, etc. can be an expense in the resources of time, energy and money that a fledging business can ill afford and which can often contribute to its failure.

Established businesses who are expanding their range of products into new spheres should also take heed.  

Just because you have used a mark in respect of particular goods or services for years, and have a registration for the same, does not give you the automatic right to use that same mark in respect of different good and services.

Bentley motors v Bentley clothing 

In 2021 the conclusion of a trade mark infringement case between Bentley Motors and Bentley Clothing was widely reported in the media.  

Bentley Motors, despite their large reputation in the mark BENTLEY in respect of cars, was ordered by the court to stop selling most types of clothing under the mark BENTLEY.  

This is because the unconnected company Bentley Clothing was the owner of earlier registered rights in the mark BENTLEY in respect of clothing.

Look before you leap!

A “look before you leap” mentality is essential in business and this philosophy should not be ignored when it comes to adopting a new trade mark or expanding use of your existing trade mark into a new sphere.

Our trade mark attorneys are well versed in the risks involved in adopting a trade mark and would be happy to assist you by conducting clearance searches on your proposed marks and providing an assessment of the risks involved in adopting a particular identifying sign.  

Once you are able to fully assess the lay of the land, you will be in the position to decide whether to brake or accelerate.

-Cherrie Stewart