What’s in a Name? Strategies for Choosing the Best Company, Brand and Domain Names

Have you ever wondered why large companies spend such vast sums of money on choosing and protecting their company and brand names? Judeth Neville sets out a few simple rules to allow you to make valuable strategic decisions on company, brand and domain names that will enhance your competitive advantage.

A good name sends a powerful message and can be worth a thousand words of marketing. Names should not simply differentiate you from your competition, they should convey an entirely positive image of your company, products or services – something that is persuasive not only to customers but also to potential investors.

Your naming strategy is therefore intrinsically linked to your competitive advantage. It ensures that you alone can use your name and minimises the risk of possible confusion with your competitors. These rules apply to all businesses – from sole traders (including those trading under their own name) through to large multi-national organisations.

The golden rules for choosing a name are as follows:

• Ideally, choose one name which you can use in the same form (or at least in a similar form) for your company/trade name, brand and domain name. One name is easier for customers to remember and can be advertised more cost-effectively.
• Choose a distinctive name. Examples include APPLE (for computers) or AMAZON (for books). You will only be able to register your name as a trade mark if it is either distinctive in itself or you can show it has become distinctive through your use of it. A name that describes the business you conduct may be easier to market in the short-term but may never be sufficiently distinctive to be granted protection as either an unregistered or a registered mark.
• Avoid conflict with existing names, brands and marks. Your specialist IP adviser can help you conduct a full ‘clearance search’ to ensure your chosen name is neither identical nor similar to a third party’s company/trade name or brand/trade mark. It is advisable to do such a search before you start using your name rather than risk the embarrassment, inconvenience and cost of being forced to change it post-launch.
• Avoid names that include controversial words such as geographical terms, names of famous people or names of international organisations.
• Keep it short. A single name is always preferential as it is easier for your customers to remember and type (for the same reason, avoid hyphens).
• If possible, register/apply for your company name, domain name and trade mark at the same time in all major countries of interest before you begin using them¹. A number of clients have recently obtained one or two of the three types of registration, only to find that a third party has intervened – sometimes overnight – to ‘steal’ the remainder.

In the UK and most other European countries, you are required to register your trade name. In the UK this will be as a limited company name, registered at Companies House. In some countries this trade name is also known as a ‘firm’ or a ‘nom commercial’².

In the UK, two companies cannot register identical company names. However, you must remember that company name registration offers only limited protection. There only needs to be the difference of one letter for someone to register a similar company name to yours. Also, simply registering your company name does not allow you to prevent third parties from using it.

Most countries impose restrictions on what names can be registered as company names/trade names. Some prohibit the use or registration of trade names that are the same as, or confusingly similar to, local or foreign trade names or trade marks. Others will refuse to protect non-distinctive trade names or those that are expressed in numbers.

Therefore, if you want to be able to use your trade/company name in a number of countries, consider in advance the limitations in those countries. The World Intellectual Property Organisation (WIPO) has recently published a summary of the position in over 70 countries around the world. To view the survey, visit: http://wipo2.wipo.int/process2/report/html/annex15.html

Ideally, choose a brand name that you can protect as a registered trade mark. Your budget may prevent you from registering the brand as a trade mark straight away but at least you preserve your ability to do so in the future.

A trade mark is much easier to protect once it has been registered, so registration should be a priority as soon as funds allow. Registration "gives your company the exclusive right to prevent others from marketing identical or similar products under the same or a confusingly similar mark".³ Without it, your marketing investment may be wasted. Furthermore, you can more easily license a registered trade mark to other companies, which could generate an additional source of revenue for your business.

If a trade mark is of interest to you, then ask your specialist IP adviser about an ‘availability search’ to determine whether registration of your chosen brand is possible. A low-cost starting point is the UK Patent Office’s Search and Advisory Service. For £70.00 + VAT, the Patent Office will undertake an availability search covering the UK, Community Trade Marks (CTMs) and so-called ‘international marks’ as well as provide initial advice on UK registration. Again, this search is best conducted before you begin using your brand.

One of the best means of registration in the EU is through a CTM. If you are currently considering this, there are good tactical reasons why you should apply before 30 April 2004.

Domain names have become crucial company assets. No two people can acquire an identical domain name. However, it is possible for another party to register a name which is confusingly similar to yours in the same/a different domain or to register an identical name in a different domain – the fact you own ‘your brand.com’ does not prevent a third party from registering ‘yourbrand.co.uk’. Therefore, you must still consider the additional protection afforded by, for example, a registered or unregistered trade mark. You should also consider registering the key domains identical and similar to your name and using them to divert to your main site. This will prevent third parties from being able to misdirect customers who had intended to visit your site.

Generally, the TLDs/SLDs for commercial entities, such as .com, .biz, and .co.uk have lenient registration rules and names are allocated on a ‘first come, first served’ basis. On the other hand, some TLDs and SLDs have more onerous rules. For example, company names can be registered as ‘.ltd.uk’ or ‘.plc.uk’. These can be registered only by following specific rules that are administered by Nominet. Registrants in ‘.ltd.uk’ are required to be private limited companies. Registrants in ‘.plc.uk’ have to be public limited companies registered under the Companies Act 1985. The domain name must be derived from the official company name of the applicant in accordance with Nominet’s detailed rules.⁵

Apart from TLDs/SLDs designated for commercial and non-commercial entities, it is also possible to register your personal name under the ‘.name’ TLD or ‘.me.uk’ SLD.

Protecting your personal name against misuse is often considered alongside the ‘right to privacy’ – something that is recognised in several international conventions but does not, as such, currently exist under UK law. Partial protection to some aspects of privacy can be found in legislation such as the Human Rights Act 1998⁶ and the Data Protection Act 1998.

A well-known personality name has great potential for exploitation and therefore you should protect it where possible. The UK courts, and indeed WIPO domain name arbitrators, tend to acknowledge the common law (unregistered) trade mark status of personality names in claims under ‘passing off’⁷ and similar concepts as long as the name complies with the basic requirements for such claims.

Provided that your name is associated with a particular product or service and the trade mark registration requirements are satisfied, a personality name may be registered as a UK trade mark, a CTM and/or as an international trade mark. In fact, the UK Patent Office advertises the possibility of celebrity trade mark registration on its website.⁸ However, there are restrictions on whether surnames can be registered as trade marks.

What if your name is "Lauren" and you would like to set up your own business but are concerned about a possible conflict with the famous fashion and perfume brand? Under EU law, a trade mark owner cannot prohibit you from using your name or address in the course of your trade. This protection will apply only if your use is in accordance with honest practices in industrial or commercial matters.⁹

A personal name also benefits from certain protection if it is used as the name of a business or partnership. The extent of this protection differs from country to country. As to the possibility of personal domain names, see the Domain Name section above.

© Pictons 2004. First published in Pictons’ "In the Know" email newsletter.

Pictons Solicitors is regulated by the Law Society. The information in this article is correct at the time of first publication in February 2004. Every care is taken in the preparation of this article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.