Pre-Apply Trade Mark Search

This month the United Kingdom Intellectual Property Office (UKIPO) have introduced a new online tool to help improve possible applicant’s chances of successfully registering a trade mark through artificial intelligence. The trade mark pre-application tool has launched into public beta for testing so the service can be used by anyone but the UKIPO are aware further developments are required to this tool.

It allows possible applicants to check:

• If there is a prior registered mark identical or similar to the application;
• the proposed application is line with Trade Mark Act 1994;
• the applicable costs.

In April the UKIPO mentioned the pre-application project and their steps to accomplishing this. They have vastly improved the project since then with providing a working tool for use. Through feedback by professionals and examiners the tool is at a stage to be provided to the public testing.

Originally the tool split into 3 phases, each of which had a results page – which confused many people but through the feedback this has been improved and streamlined for users effectively making it easier and quicker for users to see their results.

One way in order to simply things was by simplifying the language so it was relatable, meaningful and jargon-free. The feedback showed ‘class’ was an unfamiliar term to a lot of customers and can unnecessarily complicate the selection process, so this is changed it to ‘goods and services’, which is more meaningful and specific.

There is still limitation, as with all things. The UKIPO has been careful to explain the limitations of the tool to ensure the right expectations. They have been clear that the results can give users an indication of what objections could be raised against a trade mark, but by no means this is a definitive answer. Equally, the advice provided by the tool is no substitute for professional advice from a trade mark attorney. Ultimately, such decisions about registering trade marks to be made by IPO staff, given how complex and valuable they can be.

It’s exciting time for the UKIPO with sharing this tool which they believe would see vast improvements to the quality of trade mark applications. There is still more work to do though. The public beta stage will provide a lot of feedback which will surely be taking into the consideration. It is definitely work a try.

To access the tool, go to the first page of the trade mark application form on GOV.UK. Select the first option ‘trade mark owner or the authorised person within their business’ and click ‘continue’. You will then be presented with the option to access the pre-apply tool or continue with your trade mark application.

We will ensure to update you on this tool but essentially it is advised to always take legal advise before filing trade mark applications and we at Briffa are always here to help.

Written by Hasnath Ahmed, Solicitor