However, as has been shown by the recent move by Google to name its parent company Alphabet, such decisions can backfire if not considered carefully at the start.
A stitch in time….
In order to avoid costly disputes and disappointment later down the line, it is vital to carry out a series of standard checks and searches to ensure that a business name doesn’t infringe any existing trade mark rights.
The results of these searches should be gathered and considered before deciding to run with the name or not.
For the enthusiastic entrepreneur, it may be tempting to overlook this stage in the development of a new business. Even if they understand the importance of clearance searches, they may decide to carry these out themselves, without involving experts and this could lead to problems.
Google’s decision to name its parent company “Alphabet” may have been made rashly, given that they are now facing potential trade mark infringement claims by a leasing firm of the same name which is owned by BMW. The German car maker owns the trade mark Alphabet and the domain name alphabet.com. Depending on BMW’s assessment of the situation, a costly infringement action could follow.
Use the right sources
Without exception, the searches that should be carried out by all startups include the Trade Mark Register, which can be viewed at the UK IPO’s website, Companies House and top level domain (TLD) name listings, held by Nominet.
These need to be performed carefully, considering marks that might be considered confusingly similar.
Breadth as well as depth
Entrepreneurs should be aware that performing searches is an important task that needs to be carried out professionally and comprehensively.
It is not enough to rely on searches based on the proposed business name alone. It is advisable to carry out searches for trade marks or business names that are phonetically similar or differ by just a letter or two, particularly if these names have secured trade mark rights in a similar category of goods or services.
The results from these searches need to be carefully considered, before taking a view on whether the new brand name is worthy of further investment.
Find out more about trademarks:
- The Coca-Cola bottle: Securing an unusual trademark
- Everything you need to know about trademarking
- A basic guide to trademark law
It’s a small world
If the new business has international aspirations, it may be necessary to search further afield.
Most EU countries have their own online registers and while carrying out global searches would be difficult to justify from a cost perspective initially, appropriate searches in key international markets should be performed.
Once the appropriate searches have been carried out and trade mark registrations filed, the new owner of these rights needs to stay alert to potential infringements, and seek to block them, or take legal action against them, where necessary.
Watches should be established to monitor for any potential infringement. In the case of an infringing domain name, it is possible for a trade mark owner to apply for the offending domain name to be surrendered or even have the rights transferred over to its own business.
In Google’s case, BMW has said it is in the process of determining whether infringement has taken place. Depending on the outcome, a costly trade mark infringement action could follow.
Fiona McBride is a partner and trade mark attorney at Withers & Rogers.
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