Recently, I had a client come in and he had received a letter of demand from a totally unrelated company (“claimant”) (represented by a large law firm in Sandton), which was claiming trade mark infringement, passing off, abusive domain name registration, unlawful company registration against his company name and domain names, which wholly incorporated the trade marks of the claimant.
Whilst client had a good defence against these claims, it did not have the funds in order to fight off the claim; and I was instructed to agree to the demands of the claimant, including reregistration of the company/domain names and further undertakings not to use the name in any way in relation to its business – effectively, an entire overhaul of the name, advertising, promotional, website and other materials of my client needed to be done. A full two years’ worth of effort and funds in building its business around this name had been lost. What a shame. This can be avoided.
The reason for this calamity is that the Commissioner of Companies does not check the Trade Marks Register; and the Registrar of Trade Marks does not check the Companies Register (as odd as that sounds – that is a discussion, perhaps, for another day).
I recommend to almost all trade mark applicants to conduct a trade mark search prior to filing trade mark applications. This is equally true for clients wishing to adopt a new company name or trading name. As can be seen in the above case study, if only the client had come to me before adopting its company name and domain names, I could have conducted such a trade mark search; we could have discovered the claimant’s trade marks; and we could have decided on a completely different name, which would not infringe on another’s trade marks. This trade mark search will save you potential costs and effort in promoting a name that another with that trade mark within it or something confusingly similar. The risk is reduced significantly, although, at present we cannot search for trading names, as the Consumer Protection Act’s provisions dealing with same have not been promulgated and a register has not been set up.
Our trade mark searches include searches of the Trade Marks Register and the Companies Register, so you can feel even more secure in the knowledge that you are not infringing another’s company name rights either, for example if there are any defensive company names registered with respect to that name. It must be said that the search cannot detect common law or unregistered trade marks that others are using in the market. But, as stated above, the risk is reduced significantly.
Let RM Tucker Attorneys assist you through this process before the problem seen above happens to you.