Before a new trade mark
is adopted, its use should be cleared by an infringement search
on the trade marks register in the relevant territory, and
preferably also in the marketplace.
This also applies to existing trade marks if they are to
be used for new products or services of a different kind -
for example, extending a footwear business into selling handbags,
or a motorcycle manufacturer beginning to offer leather jackets.
Clearance searching can be vital to prevent having to alter
literature and packaging after stocks have been ordered and
supplies obtained - something which can then mean considerable
cost.
It is necessary to check not only for an identical trade
registration or application for your kind of business, but
also anything confusingly similar in respect of other goods
or services - an energy drink named Viagrene was
held to infringe the Viagra drug trade mark registration,
for example.
Because of the complex issues which can be involved, making
a sufficiently comprehensive search and interpreting its results
should preferably be handled by a trade mark attorney, who
will be familiar with the specialist area of law involved.
Language is another consideration if you intend to market
overseas. For example, if you are in the giftware business
and exporting to Germany, you have to be careful since the
word gift in German means "poison".
Be careful also that you do not inadvertently infringe through
mistaking something as a generic term in the public domain
when it is, in fact, a trade mark registered by someone else
who will object strongly to your use and may threaten legal
action.
For instance, Yellow Pages may be a generic term
in the USA but in the UK is a registered trade mark of Yell
Ltd for classified directory services. Conversely, Telex is
a term in the public domain in the UK in respect of telecommunications,
but a registered trade mark in Canada of AT&T Canada Corp.
Take care also about using words or symbols protected under
other legislation than trade marks, such as the Olympic and
Red Cross names and symbols, or the words "Bank"
or "Royal".
Marketing another company's products as a independent distributor
- or supplying parts, accessories, consumables or repair services
for another company's products ' needs particular care as
well. For example, describing oneself as a " Honda
dealer" is not simply the same as "dealing
in Honda cars", and a "part for a Honda
car" can come from anywhere, whereas a "Honda
part" should be Honda original equipment.
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