Brand name disputes occur all too frequently because the trademark registers are increasingly cluttered and it can be difficult to find available names. You may be found using a name for one purpose, but as soon as you use it for another purpose you could actually be facing a brand name dispute.
When you use a name or other brand symbol that someone else claims to have a better title to, or if you find someone using confusingly similar branding to yours and want to challenge it, you have a dispute to deal with.
As it is not widely appreciated that it is necessary to check the trademark registers before using a name, brand name disputes are one of the most common ones we see. For example:
- A client secures their desired domain name, sometimes spending thousands of pounds, only to receive notice that its use infringes on someone else’s trademark rights. The rights to use of a name stem from trademarks not from domain or company name availability.
- If a domain name is registered that is deemed to be a registration in bad faith, then you could be challenged to return the domain to its rightful owners. For example, even if you have managed to buy a domain name for the name cocacolaclothing.co.uk for your online clothing business it does not mean you are entitled to use that name to sell your line of clothing.
- A logo is registered as a UK trademark, but an EU trademark owner believes it infringes on their word trademark and sends a cease and desist letter requiring the withdrawal of all products bearing that logo.
Sometimes someone may simply be using their own name in the business, but this may conflict with a registered trademark. For example, if your name is Paul Smith and you are a fashion designer, you would have a potential dispute to deal with if you decided to set up shop as Paul Smith, given that the trademark rights of the famous designer Paul Smith in fashion and clothing would block you.
Resolving the dispute
Brand name disputes usually take one of three forms:
- Either the dispute is in relation to registered trademarks – these may involve opposition to a trademark application or a cease and desist letter threatening court proceedings.
- Brand name disputes can also occur if someone is using a name but hasn’t registered it as a trademark. In that case, they would argue ‘passing off’ and possibly threaten court proceedings. Or if you have applied to register a trademark they may either oppose your trademark application based on their earlier rights or apply to cancel your registration if you have already registered the mark.
- Domain name disputes – now whether or not the brand name is a registered trademark, and no matter how strong or weak your position may be, the starting point for addressing any brand name dispute is to get specialist advice so as to decide how best to respond.
You may need to change your name and will need to use someone who both understands brands and names. It is so important to use a trademark expert who ‘gets’ branding rather than simply asking a brand agency to help you. Leaving the legal dimension till after the choice has been made could expose you to a further dispute, or leave you with a name that can’t uniquely belong to you.