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Trademarks – What's in a name?

10 August 2012
Trademarks – What's in a name?

The Hobbit pub's fight with a movie giant has highlighted the issue of trademarked names. Mark Holah explains how to avoid an epic battle

The problem
I am a pub owner and am thinking about changing the name of my pub. What steps should I take to ensure I don't end up choosing a name that is already a registered trademark?

The law
If someone owns a trademark registration for the pub name you want to choose, or something similar, they could sue you for trademark infringement if you start to use that name, force you to change the pub name and pay them damages.

In addition, you could be sued for "passing off" if someone has obtained a reputation in the use of your chosen pub name (or a similar name) - and they don't need a trademark registration to do that.

To avoid either of these types of actions being brought against you, you should carry out trademark clearance searches.

Expert advice
Getting a clearance search done by a trademark professional is likely to cost several hundred pounds. You might think it is over the top to suggest you should spend this much money when changing the name of your pub, however, even ignoring the legal fees that would be incurred defending a threat of infringement (likely to be a lot more than the cost of a search), the cost of rebranding a pub (and the embarrassment if you have to change name again) means that it pays to ensure you are not going to get into trouble for using the new name.

Recently the Hobbit, a pub and late-night entertainment venue in Southampton, has been in the news after being accused of trademark infringement by the Saul Zaentz Company, owner of the rights to JRR Tolkien's book The Hobbit. This dispute is in the process of being settled (according to the pub's website) and it appears that a licence will be granted to the pub so that its name won't have to change, but the owners will no doubt have incurred legal fees in sorting this settlement.

Interestingly, the pub has apparently been called the Hobbit for 20 years, which means that if the owners had wanted to spend money defending the action there are a number of defences that may have been available to them: but the very high costs of trademark infringement proceedings (potentially several hundred thousand pounds) mean that for most businesses fighting a large trademark owner is not really an option.

Beware!
Turning back to the situation where the name of a pub has just been changed, none of the potential defences given by 20 years of use would be available - and a newly rebranded pub would probably have been forced to change its name.

Looking at the trademark searches that would need to be done, there is a temptation to do these yourself by looking on the UK Intellectual Property Office website. However, this is risky, as it isn't just as simple as checking out whether the identical name has been registered: if you use a name that is similar to a registered trademark, that can also lead to infringement.

It should also be noted that checking what other pub names are already in use won't necessarily help you avoid infringement, as it is possible to obtain a trademark registration without ever having used a name: so, while your knowledge of the local (and national) market is useful, that isn't enough in itself.

While you could instruct a trademark professional to do this type of search as well, your market knowledge means that you are probably better placed to carry out this type of search, though it may be worth getting an opinion from a trademark professional if you find anyone using a closely similar name.

checklist
Instruct a trademark professional to carry out a clearance search to try and ensure you won't get sued for trademark infringement.

Also, do some research yourself to see if someone else in the local area (or nationally) is using the same name and has a reputation with that name - and get advice on the results if necessary.

Contact
Mark Holah is a partner at Field Fisher Waterhouse
mark.holah@ffw.com

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