Partner, Anton Hutter has been featured in the July 2019 edition of the Surrey Business Magazine explaining the pitfalls new businesses often fall into by not seeking professional advice and registering their trade marks.

If AI were applied to the data regarding businesses forced to rebrand because of an ill chosen trade mark, the algorithm would direct every nascent business to get professional trade mark advice.

Using search engines to establish that a brand is not already being used is a sensible first step, but such a search won’t reveal whether a third party already enjoys the monopoly conferred by a trade mark registration of an identical brand, but has not yet begun to use it.

Many young businesses have fallen foul of this trap. Having invested time and money in their brand, they are shocked to receive a trade mark infringement claim from the owner of trade mark registration of an identical or confusingly similar brand. Ignorance of the existence of a registered trade mark is no defence and rapid rebranding is usually the only way to avoid a successful trade mark infringement claim, with all its financial consequences

The last thing a business needs is to be forced to rebrand, let alone in a rush. If use of a brand name infringes an earlier trade mark then the chances are that use of the business’s domain name does too. Thus, websites must be shut down and signage on bricks and mortar outlet and all marketing material must be replaced. While replacing these is a headache in itself, worse still is the permanent loss of the goodwill.

So how to protect yourself from such a nightmare?

• instruct a professional to carry out professional clearance searches to identify potential obstacles posed by earlier trade marks

• ensure the obvious domain names are available.

If selling/licensing your product outside the UK is part of your long term plan, the same searches should also be carried out in these other markets right from the start. In addition to identifying third party rights, professional advice will identify any negative connotations which your mark may have in non-English speaking territories.

Imagine that, after much deliberation, you finally settle on GIFT as a brand name for your product. The UK clearance searches come back clear and you protect the mark by a UK trade mark registration – sorted! You launch in the UK with great fanfare. Later you roll your product/service out on to the German market but German sales are inexplicably slow. A German contact diplomatically mentions that the problem might lie in your brand name – in German GIFT means poison.

Avoid these traps and take professional advice before investing in your brand and trade mark. Remember also that a trade mark registration, if used and renewed, can last for ever and can even cover software and software services (including AI!).

Venner Shipley is a leading firm of European Intellectual Property Attorneys, representing a broad range of clients including major domestic and international corporations, SMEs, universities and individual inventors. We offer the full range of intellectual property services covering patents, trade marks, designs, copyright, domain names and all other aspects of intellectual property, in all areas of science, technology and design from our office in the Surrey Research Park. Our services extend far beyond rights protection, to enforcement, licensing and advice on strategy, covering infringement, commercialisation and monetisation.

To view this article in the Surrey Business Magazine, click here.