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UK IPO launches AI-powered trade mark search tool

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The UK Intellectual Property Office (UKIPO) has recently launched a new service called Trade Mark Pre-Apply. This is a new online tool which uses AI powered checks and searches to help people who have not applied for a trade mark before and who have little or no knowledge of the application process, to improve their chances of successfully registering a trade mark. The aim for the UKIPO is to bring some cost and resource saving benefits to customers before applying for a trade mark, namely:

  • check if anyone already has a trade mark too similar to the one they want;
  • identify whether aspects of their proposed trade mark are not appropriate, such as offensive words or protected symbols (for example, geographical indications);
  • identify the right groups of goods and services for their proposed trade mark;
  • see an estimate of their application costs;

Naturally the free service does have limitations nor is it intended to replace the job of a UKIPO examiner. Importantly it is still in its ‘public beta’ phase (meaning that the service is available for anyone to use, but it is an early version that is still under development), although it is expected that the results will become more accurate over time as the AI learns and improves the more it is used, as well as continual development by the UKIPO in response to customer feedback.

This tool appears to be aimed primarily at SMEs although given AI tools like this one are still in their relative infancy and that the value of trade marks can be very significant, our view is that the output is no substitute for professional advice from a Chartered Trade Mark Attorney even for smaller firms. Nevertheless the introduction of this tool by a government body demonstrates the direction of travel for AI powered systems being developed. As the increasing uptake of AI progresses it will be worth monitoring, as future refinement in the AI space might lead to opportunities for more sophisticated brand owners to utilise in their trade mark searching, clearance and filing strategies.

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Nadine focuses on brand clearance and complex trade mark disputes for multinational clients. Nadine has experience in all aspects of trade mark, copyright and design registration, including, oppositions, cancellation, revocation and invalidity actions, assignments, infringements and transactions involving intellectual property. Nadine has been a member of INTA since 2007 and has served on various INTA committees since 2008. She was sub-committee chair for the Model Law Trademark Guidelines sub-committee from 2014-2018 where she completed the task to update INTA's Model Law Trademark Guidelines.

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Grant joined Baker McKenzie in 2017 from the international fast-moving consumer goods company Unilever where he held an in-house role as Global Trade Mark / IP Counsel, with 21 years in the industry. He has cultivated a deep understanding of a client’s needs along with the real practical commercial pressures that face brand owners at a time where disruptive technology and modern business models is a key driver for consumerism in a ‘VUCA’ world. With this valuable insight, he can rapidly issue spot, identify the key issues, interpret risk and, using his extensive international TM experience, devise strategies to ultimately arrive at a commercially minded solution. Grant has experience in all aspects of trade mark law including, domestic and foreign trade mark portfolio management for high-profile UK and multi-national companies. His practice encompasses oppositions, revocations and invalidity actions, infringement, passing off, domain names and copyright opinions, negotiation of settlements, brand clearance, registrations and worldwide prosecution of trade mark portfolios.

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