How do you pick a name for a new business or product without getting yourself into trouble legally? It might seem like a stupid question, and whilst the name you pick will be obviously primarily be decided by what best fits and markets your business or product, but there are some legal concepts which should inform your decision-making process.
- Passing Off: The broad idea of ‘passing off’ is that if a business (A) has developed goodwill or reputation in connection with certain goods or services which they offer, a third party (B) is not permitted to make any representation to the public (intentionally or otherwise) that its goods and services are the goods and services of business A. You need to be careful not to misrepresent your product or service to the public in this way to avoid being sued.
Practically, the best way to try to avoid this risk is to do practical checks to try to make sure that there are no businesses trading within the same area(s) as your business which provide the same or similar goods or services, under the same or a similar name or branding as your business. If you are in any doubt, you should seek legal advice.
- Trade Mark Infringement: If your business uses a logo or name which is similar or identical to a registered trade mark, and provides goods or services which are identical or similar to those for which the trade mark is registered, you may be liable to be sued for trademark infringement.
To try to avoid this situation, you can search for registered trademarks within the EU (which, for now, includes the UK and Irish trademark databases) at the “OHIM” website, https://oami.europa.eu/eSearch/.
- Registration as a Company: If you are incorporating a company, you will have to register your company’s name with Companies House. Check Companies House to ensure your proposed name is not already in use. Your proposed name cannot be too similar to that of a name already registered.
If this is the case, you may have to think of a new name. However, please bear in mind that you don’t actually have to run the business under the same name as your registered company name, and the fact that a name is available at Companies House doesn’t necessarily mean that there are no businesses trading under that name, or that you are protected from a claim for trademark infringement or passing off.
All the above might seem overly cautious, but is better to think about, and try to protect yourself around these sorts of issues early on when names and brands are still fairly fluid, than to have to go through an expensive or difficult re-branding process, or pay damages much later down the line.
Please note that while care has been taken in the preparation of this article, it is not a comprehensive statement of the relevant law and full professional advice should be taken before any action is taken in reliance on any item covered. All content is copyright of Tughans 2016.
While great care has been taken in the preparation of the content of this article, it does not purport to be a comprehensive statement of the relevant law and full professional advice should be taken before any action is taken in reliance on any item covered.