Case Study: Trade Mark Search
A savvy client was setting up a new business and wanted to use a trade mark which he had checked by doing various internet searches. His checks were good. He had looked at:
- The UK intellectual property office website ( www.ipo.gov.uk ) to see if anyone had a UK registered mark which was identical and
- google to see what products might already be on the market using that mark.
He didn't find anything but decided to pay us for an hour of searching just to be sure.
The investment in a new business and associated marketing and advertising is significant. Our client knew that if there was a problem with the use of the mark the cost of re-branding and re-launching would be much more expensive than the cost of the legal checks.
We found a company selling the same products with a very similar mark which was a registered trade mark.
Our advice was to negotiate a co-existence agreement or find a new mark. The client really liked the proposed mark so he called the CEO of the competing company and struck a partial deal. When this was put in writing the holes in it were too big to make it useful and an acceptable compromise could not be found.
Our client looked for and registered another mark.
Was this money well spent? It certainly was as our client saved £1,000s of costs in branding and advertising and building a new business based on a mark he did not have clear rights to use and which would ultimately have involved him in dealing with claims of infringement and/or passing off and rebranding from scratch.
How much time and money you spend checking that you have a "clear" market for your new brand will vary depending on your attitude to risk and whether you like to be in control and how much money you have to burn if you get it wrong.
In our view it is always better to know your market and potential problems in advance. No one likes expensive surprises and wasting time effort and money on a brand which is not useable.