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Choosing a Brand Name

The first thing to do if you are setting up a business or launching a new range of products or services is to ensure that you have an original name which is more than simply a description of the type of goods or services you are selling. Whilst “Bob’s Porcelain Cats” may need no further explanation, it is by no means snappy and it is unlikely to become a sought after brand. More importantly, purely descriptive names are unlikely to be registerable as trade marks and are hard to protect.

Once you have decided on your name, the best way to protect it is to apply to have it registered as a trade mark. If you do not register the name and a third party misuses it, you will have to rely on the laws of passing off to protect your goodwill in the name. That will be more difficult and therefore more expensive than enforcing a registered trade mark. If you only sell your products in the UK then the likelihood is that a trade mark registered in respect of the UK will be sufficient. However, if you are selling into Europe you should seriously consider the benefits of registering a Community trade mark (for most of Europe including the UK). You will need to ensure that you register your trade mark for all relevant classes of goods or services in respect of which the trade mark is intended to be used. Once your trade mark has been registered you can indicate the fact by using the ® symbol. To use this symbol without having a registered trade mark is an offence. Prior to registration you may use the ™ symbol. Your registered trade mark will be infringed if a third party uses the same mark in relation to the same goods or services and may be infringed by use of a similar mark in relation to similar goods or services in certain circumstances.

If you do not have a registered trade mark you ay still be able to protect your brand by using he law of passing off. This requires you to show that :

• you have built up goodwill and reputation in espect of particular goods or services; and
• as a result of the use of the brand by a third party, members of the public are or are likely to be confused and believe that the third party’s goods or services are connected with you; and
• you have suffered or are likely to suffer some actual loss as a result of the use of the brand by the third party.

The bigger and more widespread your reputation and the more similar the infringer’s goods or services are to yours, the better your chance of success. In order to improve any chances of success in respect of a claim for passing off, you should keep detailed records of any evidence of public confusion. If a customer tells you that they have bought someone else’s products in the belief that they were yours, ask the customer if he or she would confirm that to you in writing. If not, make a contemporaneous note of your conversation and sign and date it.

There may be little point in deciding on a snappy name and registering a trade mark if there are no domain names incorporating your name available or, much worse, someone in a similar field of business has already registered the obvious domain name. With so much business conducted through the Internet it is important to ensure that you register (and remember to renew!) relevant domain names. The obvious choice would be to register a “.co.uk” name but it is well worth registering at least the “.com” name too. In fact, with registration being so cheap, it is often worth registering as many domains as are available so as to prevent others freeloading on your success. You only need to have one website to which all these addresses can point. Also consider the number of different ways your name could appear, for example “domainname”, “domain-name”, “domain.name” or “domain_name”.

Company Names

As with domain names, before you form a company using your chosen name you need to check that no-one else has already done so. A search of the Companies House register will tell you whether or not there is already a limited company with your name. Even if you are not intending to trade as a limited company it is worth conducting this search. But remember that registering a company name does not give you any rights as such - it just stops anyone else registering a company with exactly the same name and acts as a warning to others.

You may decide to use a licensing scheme to exploit your brand. If you are considering doing this it is vital that you ensure that your licence agreements are properly drafted to ensure that you retain as much control over your brand as possible whilst maximising the benefits to you. For more information see our Trade Mark Licences leaflet. There are many more points to be considered before entering into a licence agreement and professional advice should be sought in order to ensure that your commercial and legal position in protected so far as possible.

Finally the most important issue is to take action to protect your brand if anyone misuses it. Don’t assume that the problem will go away of its own accord. If your brand is worth protecting, it will be much easier to do so when you first discover a problem than at a later date. Seek specialist legal advice and do so quickly.