One of the first natural steps when starting a business is picking a trade name. However, we have seen many startup owners and fresh entrepreneurs confused about registering their business and filing a trademark application, and assuming that the registration of their business is sufficient to obtain trademark protection.
Even though registering a company name legally is an important step in branding for a company, as it is a significant part of your brand’s identity, it doesn’t give you a monopoly over your company name.
So what is the best way to proceed when you start a new business?
1. Conducting due diligence searches
We cannot stress enough on the importance of conducting searches before choosing a trademark and company name. First, we invite you to conduct a basic Internet search via search engines such as Google. The purpose of this search is to check if the name you intend to use for your business and/or products or services is currently being used. And, if this is the case, by whom, in which jurisdiction, and in relation to which type of goods and/or services.
Once this is cleared, you should perform a trademark search to verify if the name is still available in the country(-ies) of interest. If the trademark availability search reveals the existence of a trademark which is considered confusingly similar to yours, it does not mean that the marks cannot coexist in a specific market. Indeed, the goods and/or services of interest could be different which would exclude the risk of confusion from the average public and allow your mark to be accepted for registration. A trademark agent will be able to advise you about the chances of registration of a specific trademark. You can also find out why your trademark could be refused by the IPOS.
Finally, a company search will reveal if a name is available for registration as a company name. The trademark and company name searches are two different searches in the sense that it is possible that that name is available for business registration, but is already registered as a trademark in a specific jurisdiction.
Please bear in mind that you should avoid choosing trade names that are too similar to a registered trademark, as this could expose you to potential lawsuits from prior owners.
2. Registering your business
A company name is, in short, just a way to identify a business. Registering a business name is essential when setting up a business as it creates a record of who really runs the business and how these people can be identified and located. In other words, upon registration, anyone can search for that business’s name at the relevant company’s registrar and find the contact details and information of its owners and directors.
When registering your business, each country has different rules as to what constitutes a duplicate business name. However, generally, you cannot register a business name that is identical or very similar to a name that is already registered as a business locally. It is therefore recommended that you do a clearance search before securing your company name, as stated above.
Furthermore, it is important to note that registering a business will not stop third parties from using the business name as a trademark or from operating a business under the same trade name.
3. Filing for trademark protection
A trademark identifies the source of your products and/or services from that of your competitors. Its definition is broader than a company name as it could be a logo, a design, a slogan, a packaging, and so on.
Registering your business name as a trademark will give you the guarantee that no other individual or business has exclusive use for this mark. It will prevent competitors from selling the same goods and/or services under the same or a similar trademark for an initial period of 10 years. In addition, trademark protection will provide you official protection that you are not infringing third parties’ rights.
A trademark is an asset that increases the value of your company and it is worth protecting to avoid being hijacked. However, a registered trademark does not grant any approval to do business in a specific jurisdiction.
At IPHub Asia, we help startups do clearance searches and obtain trademark protection. If you have any questions about the trademark and company name or would like to discuss this further, please get in touch.
You can also visit our website to know more about our services.