Freelancers' Questions: Is my freelance name open to challenge?
Freelancer’s Question: Since graduating from university, I have always gone under the alias of RocketQueenDesign when carrying out freelance design work. But having recently investigated opportunities closer to home, I have discovered that there is already a Rocket Design trading in my local town. I suspect that the business runs from a private residence, as I do.
Should I be worried that, if I start to get local business, that Rocket Design could object? Or should I formally register the name which I want for my business, so I can protect it, with the proper authority?
Expert’s Answer: Assuming that they're both in the same line of business, is ROCKET QUEEN DESIGN confusingly similar to ROCKET DESIGN? As DESIGN is a descriptive word, the ultimate judgement would hinge on whether consumers are likely to be confused between ROCKET and ROCKET QUEEN?
We would say that there are some reasonable arguments and precedents to say that they would not be considered confusingly similar, as a mark must be considered as a whole and, although they of course share the word ROCKET, the word QUEEN is equally prominent in this mark by distinctiveness and length.
However this is NOT an open and shut case. Because, for example, if the two names were ROCKET DESIGN and ROCKET SHIP DESIGN, as ROCKET and ROCKET SHIP are conceptually similar and ROCKET the more dominant word and distinctive, then the arguments are likely to be in favour of consumers being confused between the two.
To have more certain rights to trade as ROCKET QUEEN DESIGN, we suggest you look at seeing if it can be registered as a trade mark. Fees payable to the government are £170 (registering in 1 class that covers design activities) and typical search and advice fees from trade mark firms online start at £249 (much less and you have to check they're offering proper comprehensive searches and are suitably experienced or qualified). You might like to consider that with Trade Mark Direct, you only pay any fees if we establish the name can be registered - one of the reasons we file and register more UK trade marks than any other firm.
In addition, rights depend on who started using the name first, although this might be hard to ascertain in relation to the local business. So if you have been using the mark for many years, you may feel more confident about applying for a registration. The other owner won’t be notified about the application unless they had registered it as a trade mark themselves.
Of course, if you and the local trader are not in the same line of business then the issue of direct similarity is less, as people can use similar or the same names for products or services if it is for different goods and services.
Lastly remember, names can only be registered if distinctive (which is the case with ROCKET QUEEN DESIGN), but you would generally not be able to register SMART DESIGN as this is too bland and generic a name.
The expert was Mark Kingsley-Williams, director at Trade Mark Direct.
Editor’s Note: Further Reading -
13th June 2012