“I set up my new business 6 months ago and things had been going well.Whilst I hadn’t yet taken a salary, I hoped to do so next month and waslooking forward to treating my family to dinner! Then, out of the blue, Ireceived a very stern letter from a firm of Trade Mark Attorneys threateningto issue proceedings for Trade Mark Infringement and Passing Off againstme and demanding that I pay an award of costs. Apparently I had beenusing their client’s registered Trade Mark in relation to similar goods andservices to those covered by their registration. To make matters worse, myGoogle Adwords campaign was immediately stopped in its tracks byGoogle and my Ebay adverts were also taken down by the other side. Atthe same time, I noticed that one of my main competitors, a few streetsaway, had hyphenated my domain name, registered it, and was directingtraffic to their website. My business was suddenly looking very uncertainand I was facing financial ruin.”Don’t hide behind the common misconception that “this won’t happen tome” because believe me, it does. I am an Attorney that acts for clients onboth sides of the fence – the Claimant enforcing registered rights and theunwary Defendant trying to salvage their business in the face of aninfringement attack. Time after time, I hear myself saying “if only you hadregistered your Trade Mark at the outset, the situation could have been sodifferent and very much less costly”.

Build your business with brick not straw because there could be wolfat the door

It is a brave (or foolhardy) person that buys a house without a survey, be ita basic homebuyer or a full structural survey. So why do people think thatthey can create or buy a brand and not conduct some basic due diligence tocheck for prior conflicting Trade Mark Applications/Registrations. After all, aTrade Mark is also property and an asset.In order to register a Trade Mark, it must be distinctive, that is, notdescriptive of the goods/services in respect of which protection is soughtand it must not conflict (i.e. be identical or confusingly similar) with earlier

third party rights. In order to protect your innovation and investment, TradeMark searches should be conducted and registration applied for before abrand or marketing campaign is launched.As an illustration, in the USA, in 2007, Cisco Systems sued Apple Inc. forTrade Mark Infringement over the naming of their “iPhone” iPod-phonebased upon Cisco’s US Trade Mark Registration iPhone. The launch of theApple iPhone was delayed until agreement was reached. However, pleasebear in mind that in some cases, no amicable agreement is reached, andinfringing Trade Mark use is prevented and damages are awarded.

Three Hot tips

1. If the domain name is already registered, alarm bells should ringbecause there might also be a Trade Mark registration. This must bechecked immediately.2. The fact that you have registered your company name at CompaniesHouse does not provide you with enforceable rights or protect againstTrade Mark Infringement.3. Choose a distinctive invented Trade Mark. It is much more likely tobe free for use and registration and will serve to distinguish yourgoods/services from those of your competitors. It is imperative tocreate a strong brand identity that will stick in the consumer’s mind.

Searching

You can do a Trade Mark search for free, yes for free, on the UKIntellectual Property Office’s (UKIPO) website atwww.ipo.gov.uk. If youtype in the proposed brand name, it is possible to see if the identical TradeMark is registered in the UK and if so, for what goods and services. If youfind that the Mark is already registered for identical or similargoods/services to those of commercial interest to you, you may be welladvised to select an alternative Trade Mark at an early stage. If no identicalTrade Marks are located, a more detailed full UK Trade Mark Clearancesearch should be conducted to investigate similar Trade Marks that couldprevent use/registration of your Mark in the UK.