Everyone knows a 'Dave'. That's what the TV company
who set up DAVE, the satellite channel, rightly thought.
Unfortunately they weren't the first to come up with the name.
Mark Kingsley-Williams, director of Trade Mark Direct, has these
handy hints to help small businesses avoid a 'DAVE'
debacle.
DAVE, the station, launched back in 2007. The brand immediately
appealed to the bloke next-door audience and was a success from the
off. However, in a massive oversight, Dave's holding company UKTV
failed to get legal rights to the name: it didn't own the trade
mark. So Dave might now have to become Pete, Trev or Rob, if
another company called Dave gets its way.
This case highlights the importance of safeguarding intellectual
property. Anyone thinking of using a brand or business name should
conduct searches, not only for identical or similar registered
marks, but also for identical or similar unregistered trade marks
and/or company names that are being used for similar goods or
services.
Doing this work at the outset can save a considerable amount of
time and money. You avoid having to defend oppositions and the cost
of a re-brand for the business.
So, make sure you are not stuck with a bill for thousands of
pounds with our five easy steps:
Know the law. Registering your company name with Companies House
does not give you any trade mark protection, nor does owning the
website address.
- Make sure your company name is
trademarked
Christian Clothing Company were shocked to receive a call from
another clothing company to inform them that they were infringing
their trade mark by operating under a name that shared the first
two words of their name. The company were forced to re-brand.
Frazer Evett, its founder, said: "There was little else I could do,
the other business owned the trade mark and my registration with
Companies House and owning the URL offered no protection. I had
heard about trade marking a logo, but never just words".
Re-branding cost the company about £28,000.
Just because another company has the same name
as you, and they've registered it as a trade mark, does not
automatically mean you can't. Two companies can own the same trade
mark as long as they are registered for different products. To make
sense of what products are similar the trade mark registries
operate a system of classes, meaning that two companies can own the
same trade mark as long as they are registered for different
products. Make sure you are properly registered in all the
different classes in which you wish to operate.
- Get the right protection for the future
Think through your application and whether your business may
wish to diversify into other trading areas, such as expanding from
clothing into make-up. A registered trade mark lasts for ten years
before renewal fees are due, and once it's registered you cannot
add new categories of products or services without a full new
application.
When applying for a trade mark, it's also a good idea to think
about the long-term plans for your business e.g. do you plan to
expand oversees? If so a Community Trade Mark covers all 27 EU
countries, including of course the UK. A UK registered trade mark
gives no protection in the rest of the EU, the US or beyond, so it
is imperative that businesses with international aspirations
register their trade marks internationally if they want to ensure
their brands are adequately protected in these markets.
Find out more about Trade Mark
Direct