I am perhaps betraying my age here, but when I was a young boy, I sang along enthusiastically to the ‘Safe, Cross, Code’ song, which was part of a road safety campaign on Irish TV fronted by ‘Judge’, a puppet dog with a patched eye.
The mantra of the road safety campaign was always to look left and right before you cross the road. The same rule applies when choosing a new name for your new business or launching a new branded product to the market. Always check first to ensure that your new business name or brand is not being used by somebody else.
Very often, many start-ups make the mistake in believing that a positive search result of the Companies and/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 Trade Marks Registers 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 very same applies when you want to launch a new branded product to the market. You need to ensure that your proposed brand, in whatever forms it takes, be it a word or logo, does not clash with identical or similar existing brands already in the marketplace in your industry sector.
Why, you may ask, is it actually necessary to do a Trade Mark search?
The reason lies in the fact that a trade mark is a sign which distinguishes the goods and/or services of one trader from those of its competitors.
When a trade mark is registered in the territory where a trader operates or proposes to operate, it gives the trader a legally enforceable right to stop others from using, without consent, identical and similar signs in relation to goods and services which are identical or similar to those of the trader’s trade mark registration. You therefore need to be aware of these legally enforceable rights.
Undertaking and analysing trade mark and design searches is a highly specialised skill which only a Trade Mark and Design attorney with years of experience and knowledge of ‘risk of confusion’ law can provide.
Doing ‘DIY’ online searches runs the serious risk that the owner of an identical or 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.
In some cases, a legal challenge may result in the holder of an earlier trade mark obtaining a temporary injunction from the courts prohibiting you from trading under your chosen name or brand. This could be disastrous, particularly if you have already spent time and money in developing your brand. You may also be faced with the prospect of having to pay the earlier trade mark owner’s legal costs should they win in court against you.
In Ireland, a further complicating factor is that not all earlier rights may actually be on the Trade Marks register.
Ireland is a ‘First to Use’ country which means that the owner of an earlier brand may have sufficiently strong unregistered rights to sue you for ‘Passing Off‘. Passing Off is an action which protects the goodwill and reputation built up under a brand name. Additional non-trade mark register searches will therefore need to be carried out and analysed to provide you with a robust and comprehensive risk assessment.
I have many years of experience in undertaking ‘Freedom-to-Operate’ and Trade Mark clearance searches, having assisted some of the world’s largest companies in clearing their most important brands.
In a recent instruction, l assisted and advised an Irish based software company to clear its trading name in Ireland, the European Union and the United States. Also, in a complex instruction a number of years ago, I advised a large multi-national FMCG corporation to clear a brand for use throughout the European Union.
The brand I cleared is now highly successful and one of the leading pet snack food brands on the market. In both cases, it would have been highly risky for my clients to operate and launch their new brands without first undertaking a comprehensive trade mark search program.
The process is quite straight forward and relatively inexpensive, so its always much better to be sure before committing big budgets.
So…can you remember that song?
Niall Tierney
Niall Tierney is a Legal Brand Consultant to Fuzion Communications and an IP Lawyer located in Dublin, Ireland, Managing Director of TIERNEY IP, a specialist law firm which assists and advises businesses in clearing, protecting, enforcing and monetising trade marks, designs and other Intellectual Property rights.
