LAUNCHING A NEW BRAND? WHY SEARCHING FOR THIRD PARTY RIGHTS FIRST IS CRUCIAL.

Prior to launch of a new brand, or use of an existing brand in new territories or for new products or services, it is extremely important for searches to be carried out, to check whether third parties have acquired conflicting rights, which may pose a risk of infringement or other obstacle in law.

The consequences of infringing a third party’s rights can be serious and expensive, even if the infringement is unintentional. A trade mark owner may, for example, be entitled to claim damages or an account of profits, in addition to legal costs associated with any court proceedings. The courts may also grant an injunction, prohibiting further use of the infringing sign, as well as delivery up or destruction of the infringing products and materials.

Even where a trade mark owner is willing to settle matters outside court, it may require an infringer to withdraw products from the marketplace, or to re-label / repackage them, potentially within a very short time-frame. Likewise, promotional materials and advertising campaigns may need to be amended or withdrawn entirely. The financial consequences and reputational damage arising from such actions can be very difficult to surmount, particularly for a new business.

Searching can often be a risk-balancing exercise, and entirely “clear” search results are sometimes few and far between, particularly when a mark is to be used across a large number of territories. The legal tests for infringement are also multifaceted and subjective. Therefore, where possible, we recommend that clearance searches are performed by qualified trade mark professionals.

Trade Mark Register Clearance Searches

Ideally, full clearance searches of the trade marks registers will be carried out in all countries where a mark is to be used – in particular in core markets of interest.

Such searches normally look to identify identical and similar trade marks, registered or applied for in respect of identical and similar products and services, posing a risk of consumer confusion in law.

Trade Mark Register Knock Out Searches

Conducting full clearance searches can be costly, particularly across a large number of territories. Where budget does not suffice to conduct comprehensive searches everywhere of interest, it is still highly advisable to conduct at least an initial screening or knock out search for identical or near-identical trade marks.

No search can guarantee a mark is entirely free from risk, and knock out / screening searches in particular have important limitations. However, they are useful in detecting obvious obstacles and eliminating marks likely to pose the highest levels of risk in law.

Such searches can also be helpful if you have a number of potential options, and want to identify which marks are most viable, especially across a large number of territories. Fuller searches can then be run in markets of core importance, once the options have been narrowed down.

Common Law / In Use Searches

Many countries also make provision for protection of unregistered rights, for example, at common law, through legislation prohibiting unfair competition, or where an unregistered mark or sign has acquired a reputation. 

It is therefore also important to conduct searches for identical and similar business and company names, domain names, as well as to look for potentially conflicting unregistered trade marks, using web search engines and targeting relevant trade publications.

Recommendations

• Make sure to leave enough time for adequate searches to be carried out, prior to launch of a brand. Ideally, searches would be initiated several months in advance, in case obstacles are encountered and a new brand needs to be sought.
• Don’t assume that a brand is clear for use just because you know your market and competitors well, and haven’t seen your proposed trade mark (or something similar) in the marketplace. In most territories, trade marks can be registered – and are enforceable – before they have been put to use.   
• Ideally, come up with a range of potential options, and don’t become too fixated on a particular mark until searches have been performed.
• Where company names or key brands are at stake, the commercial impact of a conflict with a third party’s rights could be highly damaging. It is therefore all the more important that comprehensive searches for potentially conflicting registered andunregistered rights are undertaken. 
• If your budget is limited, try to undertake as much research as possible before engaging the services of a trade mark professional; you can seek specific advice on any potential obstacles of which you become aware, before deciding whether it is worthwhile proceeding with professional searches or simply better to select an alternative brand.
• Once your brand has been cleared for use, we recommend quickly applying to register it as a trade mark, to prevent third parties from acquiring conflicting rights.

This update is for general information and does not constitute legal advice. If you have any questions regarding trade marks and brand protection, please get in touch with your usual Greaves Brewster contact.

Look out for the next instalments in our Back to Basics series in the coming weeks, including guidance on drafting a trade mark specification.