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The Trade Mark Challenge
The other day I was advising a client about a trading name for a new creative enterprise. There was a danger that the name she had chosen could infringe the trade mark rights of another business - so she decided to choose a different word for her new brand.
Using a trading name without first checking that it is not already in use by another business offering similar goods or services can lead to a lot of hassle in the future. I know of several cases where businesses have been forced to change their name because of a legal challenge, which is embarrassing, to say the least. The worst thing is that the challenge
tends to happen once the new business has become established, simply because the challenger simply doesn't notice in the early days when your new company's profile is still 'under the radar'.
This is not just about registered trade marks, which are relatively easy to search using official registers (for example in the UK Intellectual Property Office online register of trademarks). A trading name can be regarded as an 'unregistered trade mark' and defended by its owner against other people using it. You could be accused of 'passing off' your business as theirs: in other words, trading on its reputation and/or taking business away from them because the public could be confused into thinking that your business is connected to theirs.
Now BSkyB is trying to stop Skype from continuing to use its name because the first three letters spell "sky" according to this article.
It's a reminder that trading names and trade marks can be a complex legal area, so it's best to take professional advice from a trade mark attorney if in doubt.
As a general rule though, the safest trading names to use are totally new words because nobody has used them before - in any context. The KODAK® trade mark is often quoted as a great example of this because the word 'KODAK' was invented, its pronunciation is unambiguous, it has no meaning in English (and, as far as I know, doesn't mean anything silly or offensive in other languages!).
So if you are choosing a trading name for a new business venture, think creatively!
If Google can't find any references whatsoever to your proposed name then it's a good start!
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First published on the T-Shirts and Suits blog.
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Let us know how and why you chose your own brand name - and share your experience and expertise with other creative entrepreneurs.
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Tags: attorney, brand, business, clearance, creative, enterprise, industries, infringement, mark, name, More…
Views: 38
Replies to This Discussion
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Permalink Reply by Pandora Melly on -
Hello David,
My 'well under the radar' business advisory company - pulling failing businesses back from the brink - is called 'Industrial Strength'. I would have added the sub-heading 'Business Solutions', but too many IT people groaned.
I chose this name because it also looks like a cleaning-chemical company, in case anyone who doesn't know what I do, wants to know what I'm doing at their place of work. It is also a well-used phrase, so unlikely to interest IP lawyers.
The Sky/Skype thing is well, um... HOW long had Skype been trading as Skype before Sky got territorial? More to this story than we are hearing, I would think.
X Pandora
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Permalink Reply by Ken Church on -
I have had three creative businesses and run two others. On one occasion I thought up the name myself. I read the dictionary from cover to cover and finally concentrated on the word "Addendum" (An item of additional material) which reflected my marketing thrust of offering my services as an extension to the clients own marketing department. The final name of the company was ADDENDA (Sales & Marketing) Ltd. I went to Company's House and found that there were no other companies using Addenda. This was about the time that they changed the rules, previously Company's House took on the role of assuring that there was no duplication of names, the onus of protecting the name was now mine.
I had an occasion to return to the same register of names a couple of years later and to my surprise there were numerous companies called Addenda. Addenda (Chelmsford), Addenda (Electrics), etc, etc. On further investigation most of these names were registered by 'company formation' enterprises. I really did not have the time or resources to start suing anybody and let it ride. A few years later another 'Addenda' in the creative business sent me a strong solicitors letter demanding I change my name. I sent back a copy of my registration and I never heard another word!
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Permalink Reply by David Parrish on -
And now UK broadcaster ITV are challenging an attempt by Apple to rename their TV set-top box "iTV":
http://www.telegraph.co.uk/technology/apple/7947882/ITV-would-conte...
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Permalink Reply by David Parrish on
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And now Facebook are taking legal action against teachers' networking site 'Teachbook' for using the word 'book' in their name, claiming that they are unfairly taking advantage of the fame and goodwill of the Facebook trademark:
http://www.telegraph.co.uk/technology/facebook/7967323/Facebook-sue...
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Permalink Reply by Georgina Kirby on -
I had a panic a few months after my business went live on the web. Someone set up an identical business to me with almost the same name. They even copied the names I gave my designs. Very annoying indeed as I offer a superior product and it upset me to think of potential clients getting us mixed up and being put off by their below par designs. The advice at the time was to take the cheapest option and re brand as they had registered as a Ltd company. I decided not to as I had already invested 12 months and a lot of money. We now have a sub brand in the wings and it's a made up word so NO ONE will be able to copy it!
© 2012 Created by David Parrish.
