Even if you’ve started researching whether your brand is available and all initially seems well, there are numerous hurdles which you may have to overcome. The nature of registered trade mark rights, being monopolies to that mark for those goods and services, can result in contentious proceedings which you might not initially see as an issue. Trade mark infringement, and opposition to the registration of a trade mark, can be based on an earlier right if there is a likelihood of confusion between the two trade marks in question. This of course, can include a commercially subjective interpretation of that likelihood of confusion by an earlier right holder.
Take the 2016 release of No Man’s Sky, one of the most anticipated computer games of recent years. Launch was delayed by several months, by a murky public excuse of ‘legal nonsense’. The real reason was that the EU trade mark application for the game’s unstylised brand, NO MAN’S SKY, was opposed by Sky Plc, based on their own SKY brand of television and related services. It was alleged that there was a likelihood of confusion and that the new application would take unfair advantage, and be detrimental to the SKY brand. Was there a likelihood of confusion? Was there in fact detriment to the SKY brand? The opposition proceedings never reached a decision, in nearly three years. What did result were negotiations, and a worldwide delay on launch of a product years in the making, with a backlog of preorders and the real risk of an anxious fan base becoming frustrated. The eventual settlement is not public – but we can see that the specification of goods and services in the NO MAN’S SKY trade mark has been heavily cut back.
These were contentious proceedings at the trade marks office, debating whether the mark should be registered. Had the game launched before this was settled, would there have been any problems? Put simply, yes, and potentially big ones. Should the owners have simply begun using the mark in the course of trade, they could have opened themselves up to an infringement action. To defend office proceedings will often be in the thousands of pounds; to defend an infringement action in the courts can very easily reach six-figure sums, regardless of whether an earlier right holder was legally correct. The lesson to take away: good preparation and establishing your legal position is vital to any new launch, and should be a core part of preparations.