By Sara Ludlam
Sara Ludlam has specialised in intellectual property law for 12 years and has worked for a number of international companies and brands. Her experience as a litigator and non-contentious lawyer enables her to save her clients money and maximise profits from the intellectual property assets they own or use.
Naming your Business
Start-up businesses can save a lot of time and trouble - not to mention money - if they do some basic checks on their proposed trading name and/or their product and service names before they put them into use.
Very often, start-up companies spend large sums of money preparing signage, stationery, uniforms and advertising, only to find that a trademark registration (or application) for their chosen name already exists.
If this is the case, any attempt to register the name will result in opposition proceedings at the Trademark Registry from the owners of the existing trademark rights.
Companies are then faced with the difficult decision of either renaming the business and wasting the initial investment in design and print costs, or facing legal action, and risking the loss of financial and management resources during the critical start-up period.
Such losses can be easily avoided with a quick and free search of the UK Patent Office www.patent.gov.uk.
This easy-to-use website will tell you if there is already a trademark or trademark application for your chosen name or a similar one, and provides a good overview of intellectual property rights and regulations.
Another regular problem which arises for new businesses is the registration of a website domain name by a third party that incorporates your trademark.
This can be difficult to remedy, particularly if the third party does not respond to correspondence.
The options available at Nominet - the internet registry for UK domain names - require fees to be paid, and depending on the circumstances, a time period of at least six months can elapse before action is taken.
This wait can be damaging if you are losing potential customers who are being sidetracked by domain name similar to your own.
To ensure you avoid this problem, register your domain name as soon as you can. The process is relatively cheap so it's worthwhile considering registering not just the site name you want to use, but similar words or abbreviations for your site, too.
This avoids the problem of rival companies registering domain names that use the initials of your business, which can mislead customers and threaten your business's reputation.
A good example of this is a recent case involving Manchester United striker Wayne Rooney. Rooney approached the World Intellectual Property Organisation to prevent another person from using his name as a web domain name.
The third party in this instance had registered himself as the owner of the domain names WayneRooney.com and WayneRooney.co.uk.
It's important to remember that you can make money if you register your trademarks.
You are not only entitled to costs and damages if a third party infringes those rights, but you may be in a position to grant a licence for future use by the third party.
You are well advised to:
Register your trademarks to maximise your legal protection;
use the * and ® notices correctly on your brand names;
get free publicity by making sure your licence agreements require your licensees to print on all your licensed products or their labels the words 'used under licence from [your name]';
conduct trademark searches, which can be done at http://www.patent.gov.uk before printing your stationery, to make sure you are not infringing an existing trademark.
Use the © notice and date on which your work was originally created; post yourself a copy of the original, dated and signed copyright work and keep it safe; ensure that any licensees are obliged to include a 'used under licence from [YOU]" notice by including this obligation in their licence agreement; and make sure you do not copy works that are copyright protected, unless you have prior authorisation from the copyright owner.
Register if you can - this gives you a monopoly right and costs very little to do. There have been recent changes to what can be registered and 'originality' (novelty and individual character) is no longer a requirement, as of 1 October 2006.
Certain design rights may exist automatically without registration being necessary, but this does not mean you cannot require a licence fee if a third party wishes to use your design.