Business development · 12 November 2018

I founded a new company with the same name as a famous brand can they co-exist?

identical brands
One of the requirements for a brand to be registerable as a trademark is that it must distinctive
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.

Question

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 categoryand 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 didnt have a trademark registered in the particular class you’re interested in.”

Would it be possible to consult you on this?

Answer

Thank you for your question.

Ive 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 didnt immediately recognise it.)

Whilst the personal hygiene brand is clearly well established, I wouldnt 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 doesnt 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:


 
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ABOUT THE EXPERT

David Walker is the founder of Grid Law, a firm which first targeted the motorsport industry, advising on sponsorship deals, new contracts and building of personal brands. He has now expanded his remit to include entrepreneurs, aiding with contract law, dispute resolution and protecting and defending intellectual property rights.

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