How clear is your brand?

Ensuring you have a clear brand that is distinguishable in the market is essential. The importance of carrying out an availability search when establishing a new brand cannot be underestimated.

What are the potential risks?

Every now and then, we are approached by a business that has received a letter from a third party threatening legal proceedings if it does not cease the use of a new brand and/or withdraw a trade mark application. Such a development obviously places the business in a real dilemma:

• Does it continue with the new brand and risk becoming a defendant to infringement proceedings?
• Does it drop the brand and lose the investment made in developing it?

It can be very embarrassing to drop a brand after it is launched, and then there is the cost associated with destroying goods/packaging and changing marketing literature/websites.

How do you prevent this dilemma?

It is advisable for businesses, as part of the process of developing a new brand, to consider carrying out a full availability search to determine if they are free to use the brand in the UK or elsewhere. Such a search helps businesses to navigate around any potential issues and assess the risk of facing any challenge to the use and registration of a trade mark in a particular jurisdiction. Carrying out a Google search is not sufficient as it would not reveal, for example, any registered trade marks not currently being used.

In addition, case law has indicated that goodwill obtained by a brand in an unregistered trade mark arising in a specific locality in the UK is capable of preventing registration of a countrywide mark and exposing third parties to a passing off action in the UK. Therefore, it is advisable to carry out an unregistered UK trade mark search in order to identify such risks.

How can we help?

Our recommendation to any business carrying out trade in the UK or EU under a new brand is to carry out a full availability search consisting of:

• A search of the UK trade mark database for any identical or similar marks.
• A search of the EU trade mark database for any identical or similar marks. This is the single EU trade mark and not a search of national trade mark registries in other EU member states.
• A UK common law search to identify any identical unregistered marks being used in the UK.

This search will give you a high degree of confidence on whether or not there are any conflicting marks that have been registered or are being used in the UK. If you are planning to use the brand in other EU members states, it may be advisable to consider a further trade mark search in that member state which would cover, for instance, a search of the relevant national trade mark database.

The cost of a full UK and EU availability search (as described above) is £1,250 plus VAT. However, this can be limited to £1,050 plus VAT for a UK only availability search.