If there’s no company registered at Companies House with the name we want to use, is it ok to use it?
Answer: This question is relevant to the launch of a new business, product or service, all of which may have a new name and it’s vitally important, before you commit to a new name, to ensure that it is free to use.
A search at Companies House to see if there are any companies registered with the name is only a very small part of this. Having a registered company name does not give you a right to trade under that name, nor a right to obtain trade mark protection for it. Similarly, though, just because a company name is available for registration does not mean it is free to use.
The key search is that of the trade mark register in each of the countries in which you intend to trade under the new name, along with a common law search to identify if anyone has unregistered rights, which could still prevent you from using the name.
The search of the trade mark register needs to cover not only identical marks, but also marks which could be deemed to be confusingly similar to your proposed brand. Trade marks may be confusingly similar in a number of ways. They may look similar, or sound similar or have a similar meaning. As you can see, it is very difficult to identify every single way in which a mark may be confusingly similar to your proposed brand and then to search for such marks. The only way in which to do this is to commission a clearance search company, which has the specialised software to carry out the search, and then have a legal review of the results and assess each one for the risk that your new brand will infringe it.
In addition to this, owners of relevant unregistered trade mark rights can also object to your new brand. Even if a company has not registered its brand as a trade mark, if it has made such use of it that the brand has built up goodwill and a reputation, it can then use its passing off rights to prevent your use of a name. What needs to be shown is a misrepresentation that your product or service is supplied by the owner of the unregistered rights, or that there is a link between the two brands, such that there is a real likelihood that the earlier brand or owner would suffer damage. Unregistered rights are, by their nature, more difficult to search for, as there is obviously no register of such rights.
Anything less than the full trade mark and common law search runs a real risk that you will choose and launch a new brand, only to find yourself hit with a letter before action from the owner of an earlier mark, demanding that you change your brand and pay compensation by way of damages or an account of profits for your trade mark infringement or passing off.
Something else to bear in mind when looking at a new brand, is that it’s also important to ensure that the relevant domain name is available.
The final thing to remember is that trade marks are a sword and not a shield. Even if you have a registered trade mark, it doesn’t allow you to use that mark. Someone may have earlier rights which you would infringe if you use your mark. A trade mark allows you to prevent later users from infringing your brand and also acts as a deterrent.
You can read more about how to avoid trade mark infringement, how it’s on the rise and how to prevent misuse of your brands in this blog by Partner and Head of Intellectual Property Team Esther Kirwan.
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