USEFUL TIPS WHEN LAUNCHING A NEW BRAND

When launching a new brand businesses often look at what steps they should take in order to protect it, but the bigger question is - can they use it?

By Joel Barry

What’s the first thing you should do when you’ve chosen a favourite new brand or brands?

• Check it’s available to be used.

People often ask for a trade mark registration. However, the question of ’can I get a registration’ is really secondary to the question ‘can I use the mark’? A trade mark opposition from someone who thinks your mark conflicts with theirs is a problem but getting injuncted from using your mark is a much bigger (and more expensive issue) problem. It’s you really want to avoid. Injunctions not only halt your business (at least temporarily) but can also expose you to additional liability. Imagine for example you are injuncted from selling your (allegedly) infringing jeans, you might be put in breach of contract with existing purchasers or clients who are waiting for the products they have ordered, in addition to any liability you may have for trade mark infringement.

Because of the low bar, in legal terms, concerning what marks may be seen as similar to your new brand and the aspirational nature of the business areas people select to protect there a serious risk of a large number of, at least, notional conflicts.

The first thing to do is check whether there is an identical mark for identical goods or services registered as that is pretty much an automatic infringement. Then you should see what you can see from internet searches. These sorts of ‘knock out’ searches will let you know quite quickly if there is a very obvious and serious problem.

After that you should conduct full registered and unregistered trade mark searches through specialist search agencies or investigators. These results need to be legally analysed and cross referenced against the owners of the marks and their uses. This commercial due diligence can flag up defence (for example based on lack of use) but also provide a commercial insight into the ability of the other party to bring an claim (or their likely appetite to do so) and whether there is really any commercial conflict.

The level of the searches you conduct is, again, a matter of your cost/benefit analysis. It’s a strange form of expense in that you spend money in the hope of a blank report giving you the all clear. However, that is rarely the outcome and when launching a new brand you need to launch with your eyes open to the possible risks.

For more information about  trade marks, contact:

joel@ceclegal.co.uk