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 desired 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 realistic risk assessment of whether you are free to operate under your desired business name.
Undertaking and analysing trademarks searches is a highly specialised skill which only a Trademark 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.
In some European Union countries, a further complicating factor is that not all earlier rights may be on the relevant Trade Marks register. Some EU Member States are ‘First to Use’ countries, which means that the owner of an earlier brand may have sufficiently strong rights to sue you even if they have not registered their brand as a trade mark. Additional non-trade mark register searches need to be carried out and analysed to provide you with a proper risk assessment.
The necessity to conduct comprehensive 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 or both. It is therefore vital that you get us involved at an early stage in the development of your new brand.
Níall Tierney has many years of experience in undertaking ‘Freedom to Operate’ searches and advising businesses on the ability to operate under their chosen name in the relevant marketplace. He also has extensive experience in clearing new brands for market launch. Níall is particularly experienced in undertaking and co-ordinating multi-jurisdiction search programs.