When choosing an identity for your new business or launching a new branded product to the market, it is all too easy to forget the importance of checking to make sure that none of your competitors have got there before you with an identical or similar name or brand.
Very often, many startups make the mistake in believing that a positive search result from the Companies or Business Name registers means they are free to trade under their new name. This can be a fatal and very expensive mistake to make. Only a comprehensive ‘Freedom to Operate’ search of the Trademarks Register in the territory where you propose to trade can provide you with a comprehensive risk assessment of whether you are free to operate under your desired business name.
The necessity to conduct comprehensive Trade Mark searches also applies when a business wants to launch a new branded product to the market. Failure to instruct us to undertake these type of searches could mean that the owner of an earlier trade mark right or brand could sue you for trade mark infringement, Passing off (in Ireland and the United Kingdom) or both.
In the European Union, a further complicating factor is that not all earlier rights may be on the relevant Trade Marks register. Some countries in the European Union adopt a ‘First to Use’ policy. This means that the owner of an earlier brand not registered as a trade mark may still have sufficiently strong rights to sue you. Additional non-trade mark register searches may therefore need to be carried out and analysed to provide you with a proper risk assessment.
Undertaking and analysing trademarks searches is a highly specialised skill which only an Intellectual Property attorney with years of experience and knowledge of ‘risk of confusion’ law is qualified to provide. Undertaking ‘DIY’ online searches runs the serious risk that the owner of a confusingly similar trademark that you have not discovered will come out of the woodwork and sue you. You may either have to abandon your plans or incur significant expenditure in contesting a legal challenge from the owner of that earlier trademark. A legal challenge may result in the holder of an earlier trade mark obtaining a temporary injunction from the courts preventing you from trading under your chosen name or using your new brand.
Niall Tierney has many years of experience in undertaking searches of Trade Mark and Registered Design Registers and advising businesses on the ability to operate under a chosen name/brand in the relevant marketplace. It is therefore vital that you get us involved at an early stage in the development of your new brand and/or new business.