What to do if your brand name is already taken?

Trade marks are signs used to identify the origin of goods and services which most commonly take the form of brand names, but can also be in the form of logos, colours and sounds.

While trade marks may be able to acquire a limited form of protection if they generate goodwill through their use, the best way to ensure protection is to register the trade mark with Intellectual Property Offices in the jurisdictions you want the trade mark to be protected.

What can you do if you find your chosen trade mark (or something quite similar) has already been registered?

  1. The first point to check is where the trade mark is registered. A registration in one country doesn’t necessarily preclude you from registering the same trade mark in another country (although it may create issues if you want to expand in future).
  2. The next point to check is when the application for the trade mark was filed. If it was only filed very recently you will have the opportunity to oppose the registration. There are several ways you can do this:
    • You could point to defects in the trade mark itself which bar registration, such as the mark being too descriptive, generic or, non-distinctive (although be careful this doesn’t also apply to your own proposed trade mark).
    •  Alternatively, you could oppose the application based on your own prior use of the trade mark, e.g. if you can show that you have already generated some public goodwill towards it. An IP lawyer can advise you on the process for opposing a trade mark.

Is there an expiry date on registration?

If the trade mark has already been registered for a while it is still possible to challenge it by asking an Intellectual Property Office or a court to invalidate it, using the same grounds mentioned above. Trade marks also need to be used to retain their registration. If you think a trade mark hasn’t been used for a while, you may be able to get the trade mark revoked for non-use.

However, think carefully before challenging a trade mark. By doing this you will have alerted the existing trade mark holder that you are using (or want to use) the trade mark and you could become a target for trade mark infringement proceedings. An IP lawyer can help you weigh up the risks.

What about domain names?

It’s also is important to note the rules concerning domain names. There is no automatic right for the owner of a registered trade mark to register a domain name incorporating the trade mark. Further, registering a domain name does not mean that the name is a registered trade mark. However, in certain circumstances, action can be taken against so-called “cyber squatters” who use a domain name that incorporates a trade mark of another person.

Can you just buy the trade mark?

Alternatively, if your desired brand name is already a registered trade mark held by someone else, as a last resort you could consider buying the trade mark. When ownership of Intellectual Property rights is transferred an assignment is used. This must be done in writing and signed by the seller of the trade mark. You could also consider asking the owner to grant you a licence to use their trade mark.

If all else fails, your last resort is to go back to the drawing board and create a new brand for your business. Once you have some ideas an IP lawyer can help you search for existing trade marks and navigate you way to obtaining your own trade mark protection.