By Julie Nixon
For any company its name and brand is of great importance, and for early stage companies it is critical that founders make sure that appropriate searches have been performed to ensure the new company or product name is not being used by another entity. This is more than just checking if a name is available at Companies House, or if a domain name can be purchased. It might be prudent to change a name if someone else could claim infringement, especially at an early stage of development, than be on the end of a costly trade mark dispute later on.
Confused about confusion?
The holder of a registered trade mark has the right to use that trade mark in relation to the goods or services the mark is registered for. They have the right to take legal action against anyone using the same or similar trade mark on the same or similar goods or services as there could be a “likelihood of confusion” on the part of the public regarding the origin of the goods and services. In other words people might think the two marks are somehow related.
There are 34 classes of goods and 10 classes of services, and some are very wide in their specification. Class 44, for example, covers medical services and garden design services! So a landscape garden company with the same name as a medical analysis company with a registered trade mark might be at risk of infringing the trade mark, even though there is an argument that no one could be confused! The medical company might just have deeper pockets, and defending an action for infringement, even with a good defence, might prove too costly.
Also worth bearing in mind is that names only have to be similar to cause potential confusion, especially where they are used for similar or identical services. For example see Andy’s recent blog where Red Bull took on a brewery called Redwell.
A trade mark need not be registered for a company to take action against potential infringement where they have built up reputation and goodwill in a mark. This is harder to litigate for the “owner” of the mark because of the need to prove reputation in the mark, and show that use of an identical or similar mark would cause confusion and damage to a business. However new businesses need to be aware that they could be on the end of a “passing off” action if adequate research is not made about prior use of a mark they hope to use in trade.
Best course of action?
So although you might be very attached to your new company name, someone might be using it already in a similar market. The Intellectual Property Office site provides an easy way of searching through registered trademarks and the classes they are registered in, and searching with various permutations of your chosen name is a good idea to look for similar names. And remember that a trade mark is assessed in its entirety when considering infringement, although some parts of a mark might be more distinctive than the rest (see Andy’s blog on BIMBO DOUGHNUTS). And a search for similar names on google is a good plan to look for unregistered trade mark use.
If there is a doubt surrounding use of a mark, sometimes it is better to rethink the product/company name, especially when there has been no initial trading or use of the name pre revenue. Trade mark law is a complex area and when seeking certainty over whether a mark can be used, the decision can sometimes come down to how much commercial risk you are willing to take. Consulting with a solicitor or trade mark agent could mean avoiding costly litigation later on.