So, you have a new product and you have selected a great new brand for that product. But is it a 'new' brand, or is another business already using it in a way that might clash with your new trade mark? It is necessary to carry out checks on whether any other business is already using a brand that might give them earlier rights that could cause problems for your trade mark before you commit to launching a new brand.

If you begin to use a new trade mark that is the same or 'confusingly' similar to an earlier trade mark right, you could be infringing that earlier trade mark which, as well as re-branding costs, could leave your business liable to pay financial damages to the earlier rights holder.

The domain name I want to use is available, so does that mean the trade mark is free to use too?

No. If your chosen brand is available as a domain name, that is a good start but this does not give any indication about other potential earlier rights in a trade mark.

The UK company name I want to use is available, so does that mean the trade mark is free to use too?

No. If you registered a company name at Companies House, that does not guarantee that the corresponding brand will not conflict with an earlier trade mark right. UK Companies House will not allow registration of two company names that are 'the same' and you can submit a complaint if a new company name is 'too like' your company name but this is a different test to a trade mark conflict and is separate from the Trade Marks Register. So, a company name registration does not give any reassurance about earlier trade mark rights that could prevent use and registration of your new trade mark.

What checks and searches should be made?

Carrying out a search engine check is a good starting point, but not enough. We often encounter businesses that have carried out basic internet checks, launched a brand and encountered conflicting third-party rights down the road.

Once your business has identified a new brand, full clearance searches of the UK trade mark register should be carried out (and consider other jurisdictions if relevant). The purpose of the checks is to clarify that there are no marks that are the same/similar for the same/similar goods or services. The UK Trade Mark Office offers a public search of identical or similar trade marks but the legal tests are complicated around what constitutes a 'similar' earlier mark for 'similar' goods or services and so any in-house checks you make should only be a starting point. It is recommended that you get a qualified trade mark attorney to carry out a full trade mark register clearance search. Note, even a full search will have some caveats. For example, earlier rights in a used mark as opposed to a registered mark will not show up on a register search but the full register search will gives a clearer picture and risk assessment of the proposed brand launch.

A cautionary tale

A recent case at the High Court Intellectual Property Enterprise Court (IPEC) – GNAT and Company Ltd v West Lake East Ltd – provided unwelcome news for a brand holder. A Cumbrian Chinese takeaway restaurant had used the China Tang name for 12 years but they were successfully sued for trade mark infringement by owners of earlier registered trade mark CHINA TANG, a Cantonese restaurant at the Dorchester Hotel in London. The Defendant claimed the defence of 'honest concurrent use' – a legal principle where two separate entities that have co-existed for a long period, honestly using the same or similar names, may continue to co-exist. Crucially, China Tang takeaway had not carried out trade mark clearance searches before using the name. The judge stated that failure to carry out trade mark clearance checks before launching a new brand gave no access to the defence, saying 'setting up even the smallest business is likely to require competent legal advice on a variety of matters and that should include the trading name. A public register of other parties' rights is there to be that those rights may be respected'. This highlights the importance of pre-launch trade mark searches.

Originally published by All things business.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.