Q. We are aiming to scale up a product for outdoor enthusiasts, after buying out an overlooked piece of technology from a large chemical company. We are now raising venture capital to invest in developing a retail brand. In choosing a name and creating an identity, are there any particular points we should bear in mind in sorting out the rights in our brand?

A. Stephen Kinsey answers:

In order to obtain the legal protection of a registered trademark, your chosen brand cannot just be a snappy description of the product. It can refer indirectly to some characteristic, of course, but if it merely tells consumers “what it is” you may not be able to protect the name adequately from the competition or from counterfeiters. Every year the UK Intellectual Property Office (IPO) refuses hundreds of trademark applications, so it is worth taking the time to obtain advice and do some research so that you settle on a distinctive name well before you want to launch the product.

You should ideally have a shortlist of possible brand names rather than committing to just one name too early on. You can check whether the identical name is registered on the IPO website (www.ipo.gov.uk) but there is much more to clearing a name for use than that. Trademark registration protects against use of confusingly similar names so a search should cover words that look or sound slightly different and which cover similar goods or services.  A registered trademark attorney will have knowledge of the case law in this area and could offer valuable advice at this stage. Obtaining this advice will save you from wasting time and costs on a name that may not be free for you to use or to build a brand upon in the years to come.

Stephen Kinsey is a Fellow of the Institute of Trade Marks Attorneys and has over 30 years’ experience of advising on brand protection issues, both in industry and private practice. He is a Partner in the London firm of Wildbore & Gibbons.