One of the most important considerations is the choice of business name or brand name.  Is your name or brand the same or similar to existing names or brands already operating in the same market?  Once you have made a choice, how should you then protect that name or brand?

Descriptive names reflecting the goods or services they are selling such as ABC Cleaning Services for a cleaning company do not necessarily form strong or memorable brands.  Obviously, this may not be an issue for very small local businesses, but for many businesses choosing a distinctive, strong and unique brand is an important part of standing out in an already crowded market place.

Many businesses will choose to simply incorporate a company and trade in that name. However, you can incorporate under one name and then trade or create brands in other names. For example, ABC Cleaning Services Limited, trading as “Flash Cleaners”.

Choosing the Name

Choosing an original and novel name or brand is not easy.  Whilst there is no 100% guarantee that the name you want is not being used elsewhere, there are some simple steps you can take in the first instance that may help you avoid potential clashes:-

• Companies House: a quick search at Companies House of the name availability checker will quickly tell you if there are other companies operating with the same or similar names. Whilst limited companies and limited liability partnerships may trade under a different name than their incorporated name this is still a good place to start your checks. If a name is available it means you can incorporate a company, or LLP, under that name although if you are intending to also trade under that name you should still carry out further checks as set out below.
• Intellectual Property Office: a search of the trade mark registry of the UK Intellectual Property Office will show any registered marks. You can also check international registries if you plan to sell your goods or services outside of the UK.
• Internet Search Engines: a quick search via Google, or other search engines, is one of the simplest and most effective ways to check for use of the same or similar names, not just within the UK, but also globally. 

• Domain Names: you will undoubtedly be seeking a web presence so do check what domain names are available. UK country level domain names (.co.uk) are operated by Nominet, top level domains (.com) are operated by ICANN.

Protecting Your Name

So, after a lot of research and head scratching, you have now come up with your brilliant and unique name, so what’s next?

• Do nothing: you can just do nothing.

 Many businesses and brands exist without their owners taking any action to protect them and will trade very happily without any problems.

In the UK, if a third party were to try and copy your business name, or brand, you would have to try to rely on the common law tort of “passing off” to stop the copying.  In essence passing off exists where you have built up goodwill in your name or brand and someone else misrepresents to consumers that the goods or services they are offering are in fact yours, and this causes you damage (e.g. loss of profit). Passing off, however, like any litigation, is not for the faint hearted. It is expensive, time consuming and stressful.

• Protect the name: businesses who decide to protect their name or brand will seek to achieve this by registering it as a trade mark with the Intellectual Property Office for UK registrations.

It is possible to register a trade mark in most jurisdictions in the world.  In some cases if you want to cover more than on country you can make individual application in each country, or in some circumstances you may be able to use certain multi-application regimes. Within Europe it is possible to register what is called a Community Trade Mark which covers certain EU member states with one application.  It is also possible to cover multiple global jurisdictions through the use of the Madrid Protocol and Madrid System.

Trade Marks

The words “trade mark” and “brand” are often used interchangeably. Both refer to signs/logos which are used by traders to distinguish their goods and/or services from those of other traders.

Trademarks are registered in one or more number of classes.  There are 45 classes in all with the first 34 classes relating to goods, and classes 35 to 45 relating to services. Each class represents a different types of goods and services, for example if you are selling clothing, footwear of headgear you would register in class 25.

The IPO charges £170 for on-line trade mark application in one class, plus £50 for each additional class.  So for a relatively small fee, you can protect your mark. The benefit of registration is that you have exclusive right in the UK to use that name for the good/service you have registered.  You also may prevent third parties from using the same or similar marks for the same or similar good and service.  Protection lasts for 10 years and is renewable for further 10 year tranches.

Summary

Before you start spending time and money promoting your new brand and products do spend time checking who else is out there using the same or similar names.  A quick check at Companies House, trade mark registries and search engines could save you a lot of time and money in the long run.

If you would like to discuss choosing your business name, trademarks or related matters, please do not hesitate to contact James Oxley on 020 3096 0825 or james.oxley@haroldenjamin.com.