Businesses looking to launch a new brand focus, rightly, on potential perception, recognition and impact in the market.  Some apply for registered trade mark protection without any prior searches.  An internet search is simple and easy – and most businesses do this, but searches of the trade mark register can be critical since they can also reveal rights that are not in use, but can still torpedo a newly-minted brand.  Register searches can help avoid challenges to trade marks registration – known as an opposition – or infringement claims which can stop a business using a trade mark altogether and result in monetary compensation.  

Where marks and the products applied for, or used are identical to a prior trademark, then the cases tend to be straightforward.  Often, they aren’t identical and the issues are more complex and difficult to predict.  Any new trade marks are advertised for a few weeks and during this time they can be opposed.  The UK Intellectual Property Office writes to owners of similar rights and larger brands tend to actively survey new applications.  New entrants should not expect to sneak through unnoticed.  

The difficulty in predicting the outcome of these cases was highlighted in the recent opposition against HOUSE OF ZANA by the owners of ZARA who both have clothing brands.  Surprising to some, the applicants for HOUSE OF ZANA resisted the challenge at a hearing at the UKIPO.  Regardless of the outcome, and the publicity gained for HOUSE OF ZANA, most small businesses would prefer to avoid disputes like this.  The consequences of a loss may have been substantial – and sometimes, even a ‘win’ can be costly in tying up management time, as well as unrecoverable legal costs.  Uncertainty around use of a brand can also impact on investment decisions and stifle growth opportunities.  Who would open and market new stores where there is a chance that they will have to be re-branded soon after?  Resolution can take months – 12 to 24 months is typical.  Few fledging businesses are comfortable pushing forward with marketing a brand which is under threat.  

A small investment in searches at the conception stage can save so much effort later.  Contact us for more information on this. Watch our video about the subject:

There is also some more detailed advice for early-stage business on our ‘We think’ page here https://burleylaw.co.uk/tech-wednesday-summary. You may also find this article on trademark searches of interest.