When choosing a new name, it can be confusing to know the order in which to do things – such as registering domain names, a company name, designing a new logo and so on.
People tend to do all these things and then only at the end of a branding project do they turn to a lawyer to protect the brand. This is the wrong way to go about it because if you’ve chosen a name that infringes on somebody else’s rights, it leaves little scope to choose a better name. You will have invested time and resources in the name, and may be tempted to continue to use that name, despite the very real and serious risks.
So, what due diligence can you carry out yourself? And when do you need the expertise of an appropriately experienced intellectual property lawyer?
Well the first point to be aware of is that the domain name or company name’s availability does not mean you may use the name. It depends what you want to use the name for.
Carrying out your own checks to settle on a shortlist
A key question is whether the name is in use by a competitor, who may have registered it as a trademark or built up unregistered rights in the name.
So, do some Google research. If you find somebody else is already using the same or a similar name within the same or a similar industry sector, then beware.
However, if someone is using a similar name, the next question is to look at where they are located. If they are based outside the geographic area in which you will do business, then you may be alright to use the name. However, it does depend.
Assess the Google search result by asking yourself whether the country the other entity is based in is relevant; whether they are potential competitors, and whether they have customers in your territory or online. If the entity using a similar name might be selling their product in the UK (say via an estore), then you may have problems using the name.
If you find nothing, this is not conclusive. For example, not all websites are search-engine friendly, and not all products are promoted by names online. In some cases, someone could have registered a mark and not started using it yet, as it’s possible to register a name for up to five years before using it.
Checking the trademark registers.
That’s why you also need to do a search of the trademark registers.
The trademark registers are public, which means that anyone can search them to discover whether someone else has already registered the same brand name. If the name is registered that means you can avoid investing on marketing, graphics, websites and so on using that name.
This is a central function of the registers, putting others on notice of their rights. However, if the name is not already registered it does not mean you’re in the clear. Is a similar name registered?
Increasingly, the search facilities provided by the trademark registries are quite sophisticated so that it’s possible to find out whether similar names are already registered too – not just exactly the same name. If you do find similar registrations, then you need to take a view as to whether the owner of one of those marks might object to your use of a similar name. If you can’t work it out, then you should pay a lawyer for a legal opinion.
How a professional can help
While I’m more than happy to provide information to help people assess the risks for themselves, it is not possible to provide opinions on specific names without being engaged to provide the service. Often it is necessary to consult the registers before an opinion can be provided.
It’s important to appreciate that initial checks do not replace the need for legal advice, but are a step to take before settling on a few possible names.
By carrying out these searches, choosing names carefully, and immediately discarding names which are obviously already in use by others, you will save yourself a lot of expense and disappointment. You will also find a shortlist of worthwhile names to ask a lawyer to assess for you.
If you get the green light, you should consider registering a trademark at the same time. That is the way to ensure the name is uniquely yours to use and that someone else doesn’t start using the same name in a way where your two businesses might be confused for one another. It costs a lot of money to resolve such disputes. A registration is much cheaper than costly litigation.
As a firm we suggest clients use the resources available for preliminary due diligence of their own, and then take professional advice if it matters to you to avoid litigation, or to have a name that you can uniquely own.
Finally, remember that not all names are capable of being trademarked, so a lawyer can add significant value to any naming exercise as they are best placed to advise whether your chosen name is capable of functioning as a trade mark. .