Registering a Business Trademark

simplybetter

I am in the process of setting up a new business; I want a European trademark for the business name.

I have done a search on the OAMI and have found a similar name.... this is where it gets interesting.

http://oami.europa.eu/en/default.htm

For Example (Not the Real Name):"Phonesline" - all one word
I have found one trademark called "Phone Line".

It was registered by a US company back in 1999 and I have done a search and it seems as if the company has stopped trading/bought over by someone else in 2001/2002.

Does anyone known how close a trademark can be if in the same classification as another similar one - as it is €900 for an application and I don't want to waste the money just to be told no.

I have seen applications by companies registering a name 3 times like: “countdown”, “count down”, “count-down”

Any Help would be much appreciated

Sponge Bob

register the irish trading name first ( www.cro.ie)

simplybetter

Hi Sponge Bob,

Thanks for the reply, I have already registered the business name with the cro, but I would like to secure the name it as I want the busienss to expand accross Europe

simplybetter

I really like the business name. A more accurate example of the issue is:

Existing trademark: phoneonline
And the one i want to register is: phonesonline

Thanks

antoinolachtnai

I think you are out of luck. It's very close. Even if you do get through stage 1, if the trademark attorney for the other company sees it, they will object, and they will get their way if they put up any sort of case.

I would ask a trademark attorney though.

Sponge Bob

see www.wipo.org on 'passing off' if its too close .

information

simplybetter wrote:

Hi Sponge Bob,

Thanks for the reply, I have already registered the business name with the cro, but I would like to secure the name it as I want the busienss to expand accross Europe

You could be sued for breech of trade mark if you trade under the name and it is trademarked.

Make sure the trademark is registered in the same sector.

Like the waterford case where waterford crystal have the trade mark waterford, but a wine company is able to use the name as wine is seperate from glassware

Howard Kent

You are better off speaking to the likes of Tomkins who are patent trademark specialists - the contact there is Seamus Doherty - they can do a quick search and it will not cost 900 Euro. but you must be very specific in the categories you wish to conduct the search and the regions. Have a look at their website for information on the categories. If you are serious about your brand it is money well spent.

Pines

simplybetter wrote:

I really like the business name. A more accurate example of the issue is:

Existing trademark: phoneonline
And the one i want to register is: phonesonline

Thanks

Well I'm a trademark attorney, so I should chip in.

PHONEONLINE and PHONESONLINE are without any doubt at all similar trade marks within the meaning of the law, as Antoinolachtnai said. Based on your judgment that this was a decent example, then the question will depend on (a) similarity of the respective goods/services and (b) likelihood of confusion.

So, let's assume we're discussing similar (or identical) goods and services and a pair of very similar trade marks.

The question then is: would there be a likelihood of confusion on the part of the public, or would there be a likelihood of association between your mark and the existing one?

If the objective answer to that last question is yes, then you can expect that you would lose out in an opposition filed by the earlier company. The closer the marks and the closer the respective goods/services, then the more likely it is that there will be confusion. I can't speculate any more than that, as it's a question of fact.

Leaving aside the question of whether you can register your preferred trade mark, there is also the possibility that you may be passing off, as Sponge Bob or that you infringe the earlier registration as Information suggested. Without wishing to depress you, you could end up being taken off the market or liable for damages if this happened.

I would agree with the advice to consult with a specialist firm of trade mark attorneys, and I'll ignore the recommendation of a competitor above . For a few hundred Euro you will get proper advice as to what you can and can't do in your specific case.

Before you even spend that much though, answer this question as honestly as possible: Would you expect the existing competition to feel aggrieved or annoyed if you went ahead with your proposed trade mark? If they are likely to think you're stepping on their toes with an almost-identical trade mark, then you probably are ... and they can probably stop you.

Far better to pick a different mark which is distinctive and unique to you.