Trademark search before founding a start-up

Why should you carry out a trademark and sign conflict check before founding a start-up? Why is a trademark search useful, even if you don’t want to register a trademark initially, but just want to start your start-up? In this article, we explain what the founding of your company or start-up has to do with trademark law and why a search for existing trademarks and signs can be useful.

Why should I carry out a trademark search when setting up 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, such as securing financing, drawing up a liquidity plan, but also corporate law issues, are usually at the top of the agenda. Trademark law does not seem to play a major role in the beginning.

Should I protect my business image and brand right from the start?

First of all, you should ask yourself whether you would like to protect your public image through trademark law from the outset by registering your “brand” as a trademark and registering it in the trademark register.

This is particularly useful if you already have a precise idea of your external business image, 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. However, a mere product name does not, unless it is identical to the company name.

If you have already thought about a clever and unique product or company name before founding the company and already know which products or services you want to use for your start-up, it makes sense to have it protected under trademark law by registering a trademark right from the start. We will be happy to accompany you.

Trademark and sign research before trademark registration

If you want to register your product name or your company (company name) as a trademark, you should always carry out a conflict check under trademark law.

Such a research is useful to find out whether there are already existing, identical or similar registered trademarks or other trademark rights that are registered for an identical or similar product or service or are used in an identical or similar business field.

If this is the case, there is a risk that the owner of these earlier rights will oppose the registration of your trademark or take action against it even after registration, e.g. in the form of a request for cancellation or a warning letter.

Since the trademark office does not examine your trademark for an infringement or a likelihood of confusion in relation to older signs 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, for example, the DPMA register, but also other trademark registers and 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 foundation

But even if you do not yet consider a trademark application to be useful 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 foundation phase

Trademark research makes sense in the (pre-) start-up phase, as you can infringe other trademark and brand rights through your business activities alone, even without your own trademark. This is the case, for example, if your product name or your company 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.

A trademark infringement always requires a trademark-like use of a sign, which is not the case if you only use your company or your company name as a company designation (so-called trademark-like use). However, if the company name or company logo is affixed to goods, used in advertising for goods or services in catalogs or as part of an Internet presence, this may constitute trademark use.

It is not possible to make an abstract assessment in advance as to whether the use is still purely company-related or whether it is already trademark-related, but must be considered on a case-by-case basis.

This means that you can infringe the trademark 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 brand or trademark already exists, “rebranding” is often the consequence. This not only entails a change in the external appearance of the start-up and all marketing activities, but possibly also a change in the company name, insofar as this violates trademark and labelling rights. In addition to an amendment to the articles of association, a change of company name also requires the involvement of a notary, which is associated with corresponding costs.

You can protect yourself from these unpleasant consequences with a trademark research during the founding process or even before the company is founded.

You can avoid these consequences with a trademark and brand law conflict check before founding your company by checking the name of your start-up before it is founded .