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Trade mark registration process: Conducting a clearance search

Article by Nondumiso Msimang (Senior Associate) Adams & Adams

A trade mark is a source identifier. Its purpose is to distinguish one’s goods and/or services from those of other traders. It can be a device, logo, brand name, slogan, signature, word, letter, numeral, shape, container, configuration or pattern, or a combination of these. It can be filed and registered in up to 45 classes, depending on the goods and/or services in respect of which it is used or proposed to be used.

There are various stages in the trade mark registration process. One of the most important steps is conducting a clearance search of the trade mark register to determine if the proposed brand or company name is available for use and registration.

If a search is not conducted prior to making application to register a brand name or prior to using a brand name in relation to a product or service offering, it could be detrimental to the new company. If a trade mark application is simply filed it could be refused of the basis of prior identical or similar trade marks; or if the brand name of a product which has been launched and sold in the market is identical or similar to the brand name of another company, such a company could institute legal proceedings against the new company. Conducting a trade mark search as the first step when starting a new company or prior to launching a new product will, accordingly, serve as a measure to eliminate risk.

There are three different types of searches which can be conducted at the Registry. These are:

  • A full search – which is the broadest and recommended search. This search covers both identical and confusingly similar trade marks which are already on the register.
  • A cursory search – although this search is not as wide or broad as a full search, it also covers both identical and confusingly similar trade marks already on the registers. Most clients tend to opt for a cursory search, as it is cheaper than a full search and also reveals the most important trade marks.
  • An identical mark search – this is the narrowest search. It only covers identical trade marks and is the cheapest of all the searches. The downside of an identical mark search is that it is not broad enough to cover confusingly similar marks and one cannot conduct an identical mark search for a logo or device.

The search does not only cover the class(es) of interest to a proprietor, but will also cover classes which are considered related classes. For example, if a trade mark is proposed to be used in relation to ‘beverages’, the search would focus primarily on class 32 (which covers beverages), but also on the related classes such as class 33 (alcoholic beverages), class 35 (retail and wholesale services) and class 43 (the provision of food and drink and restaurant services).

To ensure that a new company does not experience difficulties during the trade mark registration process, or encounter litigious proceedings and huge costs implications after the launch of a product or after the new company commences trade, it is advisable and of the utmost importance to first conduct a clearance search.

Adams & Adams is a proud Partner of the National Small Business Chamber (NSBC).