A stitch in time…
In order to avoid costly disputes and disappointment later down the line, it is vital to carry out a series of standard checks and searches to ensure that a business name doesn’t infringe any existing trade mark rights. For the enthusiastic entrepreneur, it may be tempting to overlook this stage in the development of a new business. Even if they understand the importance of clearance searches, many decide to carry these out themselves without involving experts, and this could lead to problems.
Use the right sources
Without exception, the searches that should be carried out by all start-ups include the Trade Mark Register, which can be viewed at the UK IPO’s website (www.ukipo.gov.uk), Companies House (www.companieshouse.gov.uk) and top level domain (TLD) name listings, held by Nominet (www.nominet.org).
In the case of the brand name attributed to Lord Sugar’s new internet-connected TV service, ‘YouView’, it is possible that all the right checks were carried out, but they failed to uncover the right results. Those performing the searches may have missed the fact a very similar trade mark - ‘Your View’ - already existed for a product being marketed by Gloucestershire-based telecommunications business, Total Ltd.
Following this oversight, a recent appeal court hearing has now determined that the name ‘YouView’ is ‘confusingly similar’ to its pre-existing rival and the company is now facing litigation to recover damages caused by the infringement.
Breadth as well as depth
With such costs at stake, entrepreneurs should be aware that performing searches is an important task that needs to be carried out professionally and comprehensively. It is not enough to rely on searches based on the proposed business name alone. It is advisable to carry out searches for trade marks or business names that are phonetically similar or differ by just a letter or two, particularly if these names have secured trade mark rights in a similar category of goods or services.
The results from these searches need to be carefully considered, before taking a view on whether the new brand name is worthy of further investment.It’s a small world If the new business has international aspirations, it may be necessary to search further afield. Most EU countries have their own online registers and while carrying out global searches would be difficult to justify from a cost perspective initially, appropriate searches in key international markets should be performed.
Once the appropriate searches have been carried out and trademark registrations filed, the new owner of these rights needs to stay alert to potential infringements, and seek to block them, or take legal action against them, where necessary. Watches should be established to monitor for any potential infringement. In the case of an infringing domain name, it is possible for a trade mark owner to apply for the offending domain name to be surrendered or even have the rights transferred over to its own business.
A lesson learnt?
In YouView case, the situation has now escalated, with Total seeking an injunction that could prevent them from continuing to use the name. In order to proceed, the company may need to agree a financial settlement with Total Ltd. Clearly this will result in direct and operational costs which a fledgling business could do without.
Fiona McBride is a partner and trademark attorney at Withers & Rogers, www.withersrogers.com