Why should you carry out a trademark and sign conflict check before founding a start-up? Why does it make sense to conduct a trademark research even if you don't want to register a trademark at first, but just want to found your start-up? In this article, we explain to you what the founding of your company, your start-up, has to do with trademark law and why research for already existing trademarks and signs can be useful.
Why Should I Carry Out a Trademark Search When Founding a Company?
At first glance, you might think that founding a start-up has nothing to do with trademark law. At the beginning of your time as a founder, other topics are usually at the top of the agenda, such as securing financing, creating a liquidity plan, but also corporate law topics. Trademark law doesn't seem to play a main role at the beginning.
Should I Protect My Business Appearance and Brand Right From the Start?
First, you should ask yourself whether you would like to protect your external appearance from the outset by way of trademark law by registering your "brand" as a trademark and entering it in the trademark register during the founding process of your start-up.
This is particularly useful if you already have a precise idea of your external business appearance, your business and product-specific orientation and if your product itself does not bear the company name of your start-up. The reason for this is that, as a rule, your company name, enjoys trademark protection under trademark law. A mere product name, however, does not, as long as it is not identical to the company name.
If you have already thought about a smart and unique product name or company name before founding your company and already know which products or services are to be the subject of your start-up, it makes sense to have it protected under trademark law right from the start by filing a trademark application. We will gladly accompany you in this process.
Trademark and Sign Research Before Registering a Trademark
If you want to register your product name or your company name as a trademark, a conflict check under trademark law should always be carried out.
Such a research is useful to find out whether there are already existing identical or similar registered trademarks or other trademark rights which are registered for an identical or similar product or service or which are used in an identical or similar field of business.
If this is the case, there is a risk that the owner of these earlier rights will object to the registration of your trademark or act against it even after registration, e.g., in the form of a cancellation request or a warning letter.
Since the trademark office does not examine your trademark for infringement or likelihood of confusion with respect to earlier signs and trademarks when registering it, it is up to the applicant to exclude this risk for his trademark as far as possible.
A trademark research in the form of an identity or similarity search, in which e.g. the DPMA register, but also other trademark registers as well as other public registers, e.g. the German Commercial Register, are searched for identical or confusingly similar signs, can minimise this risk.
Conflict Check Under Trademark Law Even Before Founding a Company
But even if you do not consider a trademark application to make sense in the start-up phase, e.g., because you cannot yet clearly outline your product range or your service portfolio, a conflict check under trademark law makes sense.
Trademark Law and the Start-up Phase
Trademark research is useful in the (pre-) foundation phase, as you can infringe other trademark and trademark rights through your business activity alone, even without your own trademark. This is the case, for example, if your product name or your company name is identical or similar to an existing trademark right and you sell identical or similar goods or services or are active in the same industry.
It is true that a trademark infringement always requires a trademark-like use of a sign, which is not the case if you only use your company name as a company designation (so-called company-like use). If, however, the company or business name is affixed to goods or used in advertising for goods or services in catalogs or as part of an Internet presence, this may constitute a trademark-like use.
It is not possible to judge abstractly in advance whether the individual case is still a purely company-like use or already a trademark-like use, it has to be considered on a case-by-case basis.
You can also infringe the trademark and labelling rights of others without knowing it and without having registered your own trademark.
What Do I Have to Do if I Infringe a Trademark Right?
Such an infringement, which is usually asserted by the trademark owner in the form of a warning letter, can not only lead to the obligation to pay the costs of the warning letter, but in such a situation you must also ask yourself about rebranding.
If an identical or similar trademark or sign already exists, a "rebranding" is often the consequence. This not only entails a change in the external appearance of the start-up and all marketing activities, but also possibly a change in the company name insofar as this violates trademark and labelling rights. In addition to a change in the articles of association, a change in the company name also requires the involvement of a notary public, which is associated with corresponding costs.
You can protect yourself from these unpleasant consequences with a trademark research during the foundation process or even before the foundation.