What factors should I consider when choosing a brand name?
What factors should I consider when choosing a consider when choosing a brand name?
There are many factors that you will need to consider, such as whether it is distinctive, how you want to use it (for example, whether you want to connect it to the brand owner's name) and what trade marks are being applied by your competitors.
It is particularly important that you do not adopt a trade mark that infringes anyone else's rights. Not only does this mean that you must not adopt the same name as someone else, but neither, for example, a name that is "confusingly similar". (See: FAQs trade marks and passing off). It is therefore extremely important to search national and regional Trade Mark Registers (including the UK and Community Registers).
You should also consider conducting more wide ranging searches covering, for example, company names, trade journals, telephone directories and domain names. The results of these searches may affect your ability to use a trade mark. We are always happy to advise on the best search for you. Please contact us for more information.
What names should be avoided?
As well as avoiding names that may infringe other traders' rights, the Trade Marks Act contains details of trade marks which cannot per se be registered. These include non-distinctive and descriptive names, names that are deceptive (for example, "Swisschoc" for chocolate that is not produced in Switzerland), names which contain certain national emblems, and names that are customary in the trade.
Are brand names trade marks?
Strictly speaking, yes; a trade mark is a "badge" of trade origin, like a brand name. It distinguishes the goods (or services) of one trade from those of another. (See: FAQs trade marks).
A trade mark can be words, logos, 3D shapes (and even sound and smells). So one brand may use a number of different trade marks and so you will need to consider which elements of your brand you want to protect.
Should I register my brand name as a trade mark?
Yes; a trade mark does not have to be registered, but registration will offer the best protection. A trade mark can be registered on the UK Trade Marks Registers, giving protection throughout the UK. A trade mark can be registered on other regional and national registers as well.
An unregistered trade mark may be protected by the law of passing off (or, outside the UK, unfair competition) and, if it is a logo, possibly by copyright. In limited circumstances, slogans may be protected as well. (See: FAQs on trademarks, copyright and passing off). A brand's distinctive packaging may also be protected by design law.
Since third parties are increasingly registering well known brand names as web-site addresses – which can cause a great deal of inconvenience to genuine owners of brand names – it is becoming increasingly popular to register brand names as a web-site address (a "domain name").
Once I have chosen my brand name, do I need to monitor how I use it?
Yes. Once you have chosen the name and registered it as a trade mark, as well as ensuring that third parties do not infringe your rights, you will need to monitor and review your own use of the name.
You will need to effectively manage your registered trade marks. This includes reviewing the scope of your registrations (for example, extending the territory covered by the registrations as the brand's market expands), keeping your marks up to date (for example, registering modernised logos), and renewing your UK registrations every 10 years. Next, you will want to guard against the product becoming so well known that it evolves into a "generic" name (such as Hoover) to denote any product of a similar nature, and ceases to represent to the public your brand. There are many ways you can guard against this.
It is often useful to identify a trade mark as such. In the UK, before a trade mark has been registered, the ™ sign is a useful way of telling the world that you regard a trade mark as your brand. Once the trade mark has been registered (remember – there is a distinction between an application to register and a registration), the ™ sign should be replaced with the ® sign, which shows that the mark has been registered. (N.B. using the ® sign in the UK in respect of a trade mark that has not been registered is a criminal offence).
