A recent decision by the High Court should serve as another warning to businesses to choose their branding carefully. The owners of the "Youview" brand have lost their battle with rival Total who already had the brand "Yourview".
Youview first tried to block Total from registering its brand, but when that failed, instead of abandoning the "Youview" name, they went full speed ahead with their commercial plans and tried to fight their way out of the inevitable legal proceedings that followed. But this high-risk strategy has now failed. Not only has the Court refused to de-register Total's "Yourview" trade mark, but it has ruled that "Youview" is an infringement of that mark and cannot be used.
As a result, barring a successful appeal, YouView will be forced to change their trading name. This will involve huge costs as well as a write-off of much of the investment already made in the existing Youview name. And all because YouView took a major risk in bringing a product to the market with an almost identical name to that of an established business in a very similar field.
With hindsight, it looks like a simple mistake to have made. Research could have flagged the trade mark for "Your View". It would have identified that "Your View" was registered for telecommunications services. Clearly this posed a risk to YouView’s proposed brand. In such circumstances, the business has two choices: to rethink its proposed brand or to investigate the potential risks further if it is determined to pursue the chosen name. The former would be the safer option but there will be many instances when a business wishes to follow the latter course.
As part of the initial research carried out, a business will often receive professional advice on its intended name and the risks associated with it. But it may not have, and a business in this position should always make sure that it receives a detailed and considered view from its lawyer on the merits and risks associated with pursuing its intended path. The business can then take that advice and its view of other factors into account, and weigh up its options before making its decision. One of those options may be taking a risk in spending significant sums on a name which is almost identical to that of another.
But can the business substantially reduce this risk and still use the name it wants to? In theory, yes. There is nothing stopping a business from contacting the owner of identical or similar branding and proposing that they reach some form of agreement to cover how the name will be used by both parties. These are called "co-existence" agreements, are very common in intellectual property matters, and should remove the risk of costly legal action from the other party.
However, should such an agreement prove impossible, the business will be back where it began: it must either choose a different and safe name or carry on and risk finding itself on the wrong end of legal proceedings, just as YouView did.