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Published 7 April 2021
Everyone knows that it is important to carry out some research before you name your business or product, but where do you start? The options can seem limitless, but it can also seem like all of the good names are already taken! As such, it can be easy to get overwhelmed or frustrated. To guide you along the way, Kelsey Farish (Solicitor) and Kate Loxton (Senior Associate) have curated a list of five things to consider, before you select the name for your business, product, or service.
What words and connotations do people associate with products or services similar to yours? What are their social media handles? It makes sense to look to the success stories that have gone before you, to derive some inspiration. However, you should avoid the temptation to copy ideas and names, as choosing a name that is too close to an existing brand might confuse customers or viewers, or infringe upon a trade mark.
A trade mark is simply a unique sign or name which distinguishes your services and goods from those of your competitors. One of the benefits of registering a trade mark is that the registered owner can bring a claim against a non-owner, if the non-owner attempts to use it without permission. So, before you get too attached to a name, it’s best practice to double check with the intellectual property office or registrar in your jurisdiction, to see if someone has already claimed it. It’s also a good idea to see if marks which are similar to your proposed name have been trade marked, too. Don’t forget that things that appear similar fall into this category, for example using a “0” instead of an “O”.
Even if a name or logo is not formally registered as a trade mark, you should nevertheless avoid directly copying another person’s branding. This is because in addition to registered trade marks, it’s also possible to infringe on “non-registered” or “common law” trade marks, as well as unique design elements of a website. This type of misrepresentation is commonly known as “passing off”.
2. Don’t forget the dot.com
It’s always worthwhile running checks to see if corresponding domain names and social media handles are also available to register. A good sign that there might be several companies operating on your proposed patch is finding that all of the ‘prime’ domain names have been registered – whether that’s the top level domains (TLDs such as .com) or a country code (ccTLDs such as .co.uk), perhaps leaving you with a less obvious or natural choice of domain name – including use of your brand with a qualifier (e.g. yourbrand-info), a second choice of TLD or a social media handle with more underscores than you’d like.
Settling for a second choice suite of domain names has the potential to become tedious, but also lead to misdirected emails and loss of traffic. You can check out domain names by running various Whois searches and also by looking up the domain names in search engines and likewise across social media sites. You may also find domain names have been registered, parked and are being offered for sale -often at an inflated price. It’s worth seeking advice on next steps if this is the case in order to avoid the price continuing to rise.
All of this information can help shape whether you continue with a proposed brand, or change direction before committing time and money. One last thought on domain names: we have heard of several (possibly apocryphal!) stories of domain names which have sounded great in discussions, but which have totally unintended secondary meanings when committed to domain name form: would you visit the website for the stationers ‘Pen Island’ (at least without the warning NSFW!)? Or Therapist.com?
3. Speaking of names that are Not-Safe-For-Work (“NSFW”), is the name too controversial?
Creativity and shock value are usually great for brand recognition, but did you know that business names and trade marks have to follow certain rules? In the UK, the relevant laws are primarily the Companies Act 2006 and The Company, Limited Liability Partnership and Business (Names and Trading Disclosures) Regulations 2015. Under these laws, for example, you cannot register a company under an “offensive name”, or a name which suggests a connection with the government or the Monarchy.
Likewise, names may not be registrable as trade marks if they are contrary to public policy. For example, the European Union Intellectual Property Office (EUIPO) refused to register “SCREW YOU” for general consumer goods.[i] However, in another case the EUIPO did allow “SCREW YOU” to be trade marked for sex products, on the basis that “a person entering a sex shop is unlikely to be offended by a trade mark containing sexually charged language”.[ii] Clearly, it’s a nuanced area of law that depends heavily on the circumstances. If you’re interested in using a potentially controversial name or logo in connection with your business, it’s a good idea to sense check things with a solicitor first.
4. What about company name registration?
As with trade mark registration, if you think you might eventually want to evolve your brand into a registered company, it makes sense to bear that in mind from the outset. Incorporating a new company will prevent other businesses from registering the same (or a very similar) company name to yours. You should check the corporate registrar in your jurisdiction, to ensure that your proposed name meets the statutory requirements, and otherwise is still available. In the UK you can check with Companies House, which has an online name availability checker at https://beta.companieshouse.gov.uk/company-nameavailability.
Of course, whether or not you should set up a limited company depends on what sort of work you do, and your specific business strategy and ambitions. There are certain tax advantages and funding incentives available to limited companies, but alternatives such as being a self-employed ‘sole trader’, or forming a business partnership, are worth exploring too. Lawyers who specialise in commercial contracts and intellectual property are also business advisors more generally, and should be able to point you in the right direction if you’re unsure of where to start.
5. Should you just use your own name?
Stella McCartney, Victoria Beckham, and Vivienne Westwood are just some examples of the many British fashion designers who do business under their own names – and there are countless others around the world! It’s a good idea in several respects, but there are some caveats to be aware of before selecting this option.
Firstly, by using your own name, you will essentially be tying your product or service to your identity. If something goes wrong (which could range from a PR disaster, bankruptcy, or lawsuit) it can be difficult to distance your personal life from your professional life.
Secondly, transforming your name into a commercial or intellectual property asset can result in legal complications too, as Karen Millen discovered. In a 2016 UK Supreme Court case, the fashion designer Karen Millen was found not to be the owner of her “KAREN MILLEN” trade mark. Rather, it is Karen Millen Fashions Ltd – which by that time had been purchased by an Icelandic consortium – which owns the rights to the name and confusingly similar variations. This caused considerable headaches when Ms Millen exited the company herself, and was unable to take her trade marked name with her.
Finally, if you have a common name (in the UK, this might be “Olivia Jones” or “Liam Smith”) you might find difficulty in securing brand protection. If your name is Jack Wills or Frank Wright, for example, you’d probably be out of luck!
With all of the above in mind, do remember that the name of your website, service or product – although important – will not be the sole determining factor of your success. Things like showcasing your passion, offering amazing customer service, and having an engaging personality behind the brand can be far more important than the name alone.
The above is not an exhaustive list of issues pertinent to branding and naming rights. However, we hope that it is a helpful guide. Should you have any questions regarding this note, please do contact us.
DAC Beachcroft’s commercial and intellectual property lawyers handle the full range of matters and cases related to brand protection, commercialisation and enforcement, e-commerce and data. Kelsey Farish specialises in technology and media, and is one of Europe’s leading legal experts on deepfakes and other forms of synthetic (AI-generated) media. Kate Loxton is an experienced brands lawyer with expertise in online brand protection and commercialisation.
[i] R 0495/2005-G
[ii] R 0495/2005-G
[iii] Millen v Karen Millen Fashions Ltd & Anor  EWHC 2104 (Ch) (16 August 2016)
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Kelsey Farish, Alexander Dimitrov