You’ve come up with the perfect name for your business (or a product or service), but after carrying out a search, you find that another company is already using it. If you’re in different sectors, does it mean they can co-exist?
Grid Law founder David Walker helps a reader running a new charity understand the trademark implications of identical brands.
Dear Mr Walker,
I read your article about how two identical brands can co-exist and was wondering if I might ask your advice?
I am the co-founder of a start-up charity currently called [BRAND A]. We are nearing the completion of our branding project with a design agency and are on the verge of changing our name to [BRAND B]. However, that name is already used by a very well established personal hygiene brand.
Although our line of business falls within an entirely different trademark category and despite the fact that there appear to be numerous other brands around the world that use the name [BRAND B] in a variety of categories, I note your assertion in the article as follows:
“If you have a startup with no trading history and no prior reputation, you should not pick a name that is the same or similar to a famous brand, even if they do something completely different to you. This is because of the overall strength and reputation of their brand. If they’re a household name, it would seem like you’re trying to build your business off the back of theirs. This would be unfair after the huge investment they would have made in building their brand and they would be concerned that your product or service could damage it. So, they could stop you doing this even if they didn’t have a trademark registered in the particular class you’re interested in.”
Would it be possible to consult you on this?
Thank you for your question.
I’ve carried out a trademark search to see how widespread the use of [BRAND B] is (and to be honest I also had to Google the personal hygiene brand as I didn’t immediately recognise it.)
Whilst the personal hygiene brand is clearly well established, I wouldn’t consider it to be a famous brand. Also, the use of [BRAND B] (and variations of it) is extremely widespread across a huge number of products and services, including by other charities.
This is good and bad news for you.
It’s good news because it means that the personal hygiene brand doesn’t have a complete monopoly over the use of the word for all products and services. They can only claim the exclusive right to use the word for their own products for which they have it registered as a trademark.
You can, therefore, use [BRAND B] for your charity without being concerned that the personal hygiene brand will be able to take any action against you for trademark infringement.
Read back over David’s startup series:
- Starting a new business? Make these your legal priorities
- Choosing the best business structure for your company
- Why it makes sense to adopt a limited company structure
- Overcoming branding issues for a new business
However, the widespread use of [BRAND B] could also be a disadvantage.
One of the requirements for a brand to be registerable as a trademark is that it must distinctive. The trademark, when applied to your services, must indicate to people that they are being provided by you.
With such widespread use this word, people won’t be able to make this association which means that it isn’t distinctive and you won’t be able to register it as a trademark.
So, you will need to decide whether or not it’s important for you to protect your brand as a trademark. If it is, then I would strongly recommend rebranding to something that is distinctive to you.
If you’re not concerned about protecting your brand as a trademark, then you should be fine to use this brand.
If you have any other questions about branding or trademarks, please feel free to email me again at firstname.lastname@example.org
Take a look at these other trademark disputes:
- The small British business suing Versace
- Nando’s vs. Fernando’s: The brand making claims of trademark infringement
- Legal threats from Zara lead to sole trader rebranding
- Family-run coffee company takes on Coca-Cola in trademark dispute
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