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Before Marketing Your Brand
Simon GrayProtected email address
Before Marketing Your Brand
The issue of trademark (brand) clearance has been brought to the foreground by the expansion of the European Union. New Community Trademark (CTM) applications now face potential opposition from third parties with identical or similar marks (registered or unregistered) in a heart-sinking 25 countries instead of 15. Conducting a clearance search prior to filing a national or Community Trademark application substantially reduces the risk of your mark facing costly opposition proceedings. However, it is worth reinforcing that the primary reason for carrying out a search is to minimise the risk of being sued for trademark infringement by the owner of an earlier mark.
Choosing not to do a brand clearance search prior to launching your brand will certainly leave you with one less expense to consider in your already limited marketing budget. However, finding out just before or after your launch that another company has a registration for an identical mark which covers identical goods and being forced, by threat of court action, to abandon your brand will cost you your full marketing spend to date, or perhaps more. With the stakes as high as this, it is vital that a brand clearance search is at the heart of any brand development and is taken seriously as a bottom line cost.
There are various types of searches that your trademark attorney can undertake, each one providing a different level of protection against this risk. S/he will advise you in detail on the type of clearance search that best suits your needs depending on your budget, the size of your business, the importance of the brand and your attitude to risk.
The most basic (and cheapest) type of search is the preliminary (identical) search which finds only 'knock-outs'- identical marks covering identical goods or services. It is rarely worth proceeding with a brand when a knock-out is disclosed. However, an identical search would not reveal similar marks (an identical search for YELLOW would not find YELLO or YELOW), which may still form the basis of a trademark infringement action. Identical searches are a useful tool to cull a shortlist of marks, before proceeding to a fuller search.
The second and most common type of search is the standard clearance search. This will reveal similar marks covering similar goods/services.
While this fuller search will give a reasonably good picture on risk, it does not provide the complete view. There are a number of reasons for this. First, a registered trademark can be infringed, in some circumstances, by use of an identical or similar mark on dissimilar goods or services, if the earlier mark has a particular reputation. However, this usually only applies where the earlier mark is quite well-known. Another reason is that there are problems inherent in carrying out searches of the national/CTM registers, no matter how carefully they are undertaken. For example, applications filed very recently may not be revealed since most on-line search databases, including the official registers, take several weeks to update. In addition, marks in use in the marketplace (and not the subject of a trademark registration or pending application), are not revealed by this type of search. Owners of such marks in use can, in some circumstances, prevent the use of a similar mark under the common law action of 'passing off'.
Only the most detailed (and expensive) type of search, the 'common law' search, will reveal details of marks in use. Usually undertaken by specialist commercial investigators, a common law search involves trawling through telephone directories, trade magazines and companies registers. A standard clearance search together with a common law search will provide the highest level of protection.
Once your proposed mark has been searched and found to be clear, it is advisable to file a trade mark application (either in Ireland, the UK or under the CTM system, depending on where you plan to market the brand) immediately to ensure that a third party does not get there before you. Trademark rights arise in Europe on a first-to-file basis. Applications are filed everyday and a search soon becomes out-of-date.
Before filing Irish and UK applications, your trademark attorney will strongly advise you to carry out at least preliminary searches. When filing a CTM application, although it is up to you to get advice on what searches to undertake, note that the CTM Office and many of the national Patent Offices carry out searches of their registers as part of the application process. If a problem mark is revealed in these searches, the risk can be assessed and a decision made over whether to continue with the application. However, these searches are not exhaustive.
Finally, if you and your creative team have exhausted yourselves in choosing a final brand name it can be disheartening to read a negative search report which discloses a 'knock-out' mark. It is therefore worth approaching the search report as another valuable step in the brand development process.
In addition to brand clearance, it is important to do some research into the meaning of the proposed mark, particularly if you are using an invented term or an English word in a foreign market. Your mark may be unpronounceable to Polish-speakers or may mean something different in Spanish. A bit of research can ensure that you do not end up with egg on your face - and the cost of a hasty re-branding.
This article has been published in Irish Entrepreneur.
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