New Business or Brand Name – Check first before you launch!

 

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.

 

Are you doing “Bad Business”?

Are you doing "Bad Business"?

I sat in the corridors of the Cork District Court for about 6 hours last week waiting for a really stupid case to be heard between us and our previous landlord.

Apparently Monday is HSE day at the District Court and these cases can drag on a little if they are not settled – the whole scenario is very strange with all sorts wandering around, many bored and others huddled in corners negotiating and planning. The odd person walks by with tears in their eyes – didn’t quite work out the way they wanted!

I wasted a full day at the court, my solicitor wasted a full day and the people on the other side wasted a full day, the judge wasted his time for something that should never have gone as far as the court.

Who won? – truthfully.. no one  – I felt like I was in an episode of Judge Judy and the the outcome was fine from my point of view with  Judge O’Leary (I was not expecting his approach to the case) slapping the landlord across the knuckles for not being better at minding his building and his “customers”. To be fair to the Judge it was late in the day and he must have been tired and not in the mood to listen to this “nothing” case – there must be a better way of ensuring that court time does not get taken up with rubbish? He did however give the case his full attention.

It was quite funny as I presented pictures of the front of the old building to the judge – the old saying, a picture paints a  1,000 words applied as the Judge reviewed the cobwebs on top of cobwebs pictures and then listened to how the landlord visits the building up to two times a week and checks everything. The other side argued that the pictures were irrelevant as they were just taken!

My day was  worth a lot more than the outcome and the pointless hassle that went on. A little bit of reasonableness and this could have been long sorted – the eventual result? – a compromise offer I made to sort it out 6 months beforehand is exactly where the whole thing eventually turned out! Having said all that I am sure that the little experience of sitting in the box, preparing an argument will stand to me later down the line for more stupidity at some point.

This was all about Bad Business ..

Day one we had hassle with this guy even before the lease was signed – ultimatums etc – Trust your gut and walk away when you get any hint of this – we didn’t – Bad Business

We have secured a judgement against a business in Dublin that we were dealing with and who owed us a lot of money – they still haven’t paid after a lot of hassle. They were terrible from the very first moment – not turning up for meetings and then leaving us wait forever at other times. They were inefficient, sloppy, constantly changing staff and changing their minds. We should have trusted our gut and walked away, we didn’t – Bad Business

I’m sure most of you have heard about Famous and the Credit Control Warrior at this stage – just read my blog about this saga. This is another one that will do the rounds with solicitors. We wasted more time working on the account and more again chasing what is due to us. I should probably leave it off at this stage but I don’t want him to get 1% satisfaction of walking away from anything after the way we were laughed at when we looked for our payment (I’m getting angry again just thinking about it). We should have trusted our gut in the first place and never agreed to take on this work, we didn’t  – Bad Business

We deal with a printer who are really awful to deal with. They are some of the most unpleasant people that we have to deal with. We still buy from them as their prices and quality are good – as soon as another viable option  comes along we are using someone else. I resent placing orders with them and hate ever having to lift the phone to deal with them  – Bad Business

Often the Bad Business is our own fault as we should know better and trust our instincts from the beginning. I guess at times in the depths of recession you will take on business if things are quiet but this doesn’t change the eventual outcome.

Are you doing Bad Business?

Greg Canty is a partner of Fuzion