The Gentleman’s Lawyer
Words: Guy Aubrey Devito
Introducing the Gentleman’s Lawyer, an anonymous legal expert who will advise you on issues ranging from parking disputes to alimony settlements. If you find yourself in a bit of a legal pickle and don’t want to incur horrific legal fees just get in touch with the Gentleman’s Lawyer and he’ll provide objective, well researched advice.
No. 1 – A question of trade marks
Dear Gentleman’s Lawyer,
I have just left my well-paid city job to start my own cycling company (*scary/excited!*). I have the perfect name for it, which I’m sure will be one of the key attributes of the company’s success.
I have incorporated the company at Companies House, but having done some research I now understand that I may not have the exclusive right to use that name – is that correct?
Please can you let me know what I can do to stop others from using the same brand. I really do not want my customers to get confused between me and a competitor.
Thanks Gent’s Lawyer!
(Tom, by email)
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Dear Tom,
This is a matter of intellectual property law, and specifically trade mark law.
Firstly, the Companies House record does not offer any protection to your company name. In fact, while we’re on the topic, nor does a domain name. However, there are two ways that you can protect the brand:
(1) Extensively using the brand so that you have goodwill in the trade mark; and /or
(2) Owning a trade mark registration.
If feasible, choose option 2 every time. It is far easier to prove that you have trade mark rights in the brand should you need to put it to proof.
A trade mark application can be a complex matter, so here are the main things that you need to think about.
Consider the jurisdiction.
Like all law, intellectual property rights are divided by the national laws of each country (though there is a single EU-wide trade mark application).
Registering the trade mark worldwide by filing separate applications is an expensive process, and only the very largest household brands have such protection. Therefore start with your major markets – probably the UK/EU first – and evolve to wherever else you trade – most likely the US, Canada or other European, non-EU, countries
The Trade Mark
Tom, unfortunately you did not mention the brand name you wish to protect.
If the ‘wrong’ trade mark is chosen, the application process can be particularly complex and may even lead to the application failing.
My key tips for choosing a brand are:
- Do not choose a descriptive trade mark (i.e. the brand describes the goods/services that you offer);
- Research to make sure that another party is not using the trade mark, or one that is similar and is trading in a similar industry (riding on the back of a competitor’s name is not a good idea!); and
- Unusual is always better (e.g. Google, Zoopla, Innocent Smoothie)
What Protection does a Trade Mark Registration Grant?
The exclusive right to use that trade mark in the jurisdiction in which it is registered.
It can be a nasty battle among brand owners over who gets the name, but a good rule of thumb (with exceptions of course!) is that whoever owns the trade mark registration, owns the name. Make sure you own it!
All the best,
The Gentleman’s Lawyer
To discuss any of the above or other legal matters, please contact the Gentleman’s Lawyer at lawyer@thegentlemansjournal.com.
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