You have chosen a business name, started building your brand and perhaps even begun trading. Then you discover another business using the same or a similar name.

Does that automatically mean you cannot register your trade mark?

Not necessarily.

Whether a UK trade mark can be registered when someone else is using a similar name depends on several factors, including what rights the other business has, when those rights arose, how similar the marks are and whether the businesses operate in the same or related areas.

An existing company name is not automatically a trade mark right

One common misconception is that registering a company at Companies House automatically gives the owner exclusive trade mark rights in that name.

It does not.

Company name registration and trade mark registration serve different purposes. A company may therefore have been incorporated under a particular name without owning a registered trade mark for it.

However, that does not mean its earlier use can simply be ignored. Depending on the circumstances, an established business may have unregistered rights capable of being enforced through passing off.

What if they already own a registered trade mark?

If another party owns an earlier UK trade mark for an identical or similar name, the position requires careful assessment.

The existence of an earlier registration does not necessarily prevent every later application containing similar wording.

Among other things, it is important to consider:

• how similar the two marks are visually, aurally and conceptually;
• whether the respective goods or services overlap;
• how distinctive the earlier mark is;
• whether consumers are likely to believe the businesses are connected; and
• whether the earlier registration is actually being used for the relevant goods or services.

A trade mark search should therefore involve more than simply finding similar words on the register.

What if the other business has been using the name but has not registered it?

An unregistered business can still have important rights.

If it has established goodwill under the name, it may potentially oppose a later trade mark application or challenge the use of the mark through the law of passing off.

Evidence can become particularly important here. Website records, invoices, advertising, social media activity, sales information and other dated materials may help establish when and how a brand has been used.

This is why who used the name first can sometimes be highly significant, even where one party subsequently obtains a trade mark registration.

Similar names can sometimes coexist

Two businesses using similar names do not automatically infringe each other’s rights.

For example, the commercial position may be very different where the businesses provide unrelated goods or services and consumers would be unlikely to assume a connection between them.

In other cases, relatively small differences between the marks may not be enough to avoid a likelihood of confusion.

Each situation needs to be considered on its own facts.

Search before you file

A trade mark application should ideally not be the first time you investigate earlier rights.

A clearance search can help identify potentially conflicting registrations and applications before filing. Where appropriate, the search should also consider relevant marketplace use and company names.

Finding a potential conflict early gives you more options. Depending on the circumstances, it may be possible to adjust the application, narrow the specification, approach the earlier rights holder, consider a coexistence arrangement or develop another filing strategy.

Already using the name?

If you discover a competing business only after you have started trading, avoid assuming that the party with the registered trade mark automatically has the stronger position.

The dates of first use, the nature and geographical extent of that use, the respective goods and services and the registrations held by each party can all affect the analysis.

Before sending threats, changing your brand or filing an application simply to strengthen your position, it is sensible to establish what rights actually exist.

How Corpinal IP can help

Corpinal IP advises businesses on trade mark clearance, registration and disputes involving earlier rights.

If you have found another business using the same or a similar brand, we can review the relevant registrations and use, assess the potential risks and advise on the available options before you decide how to proceed.

Need advice about a potentially conflicting brand? Contact Corpinal IP to discuss your position.

This article provides general information only and does not constitute legal advice. Trade mark rights and disputes are fact-specific, and professional advice should be obtained for individual circumstances.