Before Someone Else Takes Your Brand Name
The Independent Maker's Self-Defense Notebook - The Reality of Brand Names and Trademarks
*Isamu Hibari / Alaudae.JP*
Introduction: Could the Name You Raised Become Unusable One Day?
In this series, we have talked about Your Work Is Yours, Even If Nobody Knows You Yet and The Law Protects Your Work Photographs. This time, let us talk about your shop name and brand name.
And let me say this up front: this article contains a somewhat uncomfortable truth, different in character from the previous two.
Cases like this really happen. An individual maker spends years raising a shop name. Followers gather, repeat customers come. Then one day, a completely different person registers that name as a trademark. And in legal theory, the person who raised the name first may become unable to use it.
"How unfair," you will think. That feeling is correct. But the world of names runs on a different principle from the world of ideas and photographs. In this article, we will look at that principle, so that you can calmly decide how to handle your own name.
As always: I am not a lawyer. This article is based on my experience and research as a working craftsperson and is not legal advice. Trademarks in particular are a highly case-specific field. Before any important decision, I recommend consulting a specialist such as a patent attorney.
The First Thing to Know: A Name Belongs Not to the First User, but to the First to File
In the article on photographs, we had the reassuring truth that a photo is yours from the moment you take it. Names are the opposite.
Trademarks follow the first-to-file principle: the right is granted to whoever files the application first. Whether you used the name earlier is, as a rule, not the question. And copyright will not protect a name either: short names and the text of a logo are, as a rule, not protected as works.
In other words:
- No matter how many years you have used a name, it has not become your right until you file
- If someone else files and registers it later, the right becomes theirs
- There is an exception called prior-use rights, but to qualify, you must prove the name was already widely known, which is a very high wall for a small maker
The dated records we have discussed throughout this series are not meaningless here. But to be honest with you: the world of names is the one area that records alone cannot fully protect. That is exactly why you need to know the mechanism and make a conscious choice.
What You Can Do Today, for Free: Search Your Own Name
Before deciding whether to register or not, there is an important check you can do today, for free.
Search the trademark database of your country
In Japan, J-PlatPat (j-platpat.inpit.go.jp) is the official, free service for searching the Patent Office trademark database. Most countries have an equivalent: in the EU there is eSearch plus by the EUIPO, and international databases such as WIPO's Global Brand Database can be searched free of charge as well.
- Open the database and choose the trademark search
- Enter your shop or brand name
- Check whether the same or a similar name is registered, and in which classes of goods
There are two things to check here. One is whether someone has already taken the name. The other, often overlooked, is whether you are unknowingly infringing someone else's trademark. If you have just chosen a name, or are about to choose one, inserting this search before you commit removes one large future problem.
Note that even if you find the identical name, coexistence is often possible if the classes of goods differ. Craft materials and, say, a restaurant are in principle different arenas. There is no need to be overly afraid.
To Register or Not: Realistic Grounds for the Decision
Trademark registration costs money. For one class of goods, the official fees for filing and ten years of registration come to several tens of thousands of yen in Japan, with comparable orders of magnitude elsewhere; a patent attorney's fees come on top (though online trademark services have appeared in recent years as lower-cost options). Renewal every ten years costs money too.
For a small workshop, this is not a trivial amount. So I will not say everyone must register. Here are some guideposts instead.
Cases where you should seriously consider registering:
- You sell continuously under the name, and customers search for it by name
- You have names, such as an original technique or a product line, whose imitation would shake the core of your business
- Your name circulates beyond your own hands, through wholesale or consignment
Cases where there is no need to hurry:
- You have only just started, and the name has not yet grown
- You are still at a stage where changing the name would not hurt much
And even if you decide not to register, there is something you should do.
Keep dated records of your use of the name. Sales history, records of event participation, product tags and leaflets carrying the name, and preservation of your site with the Wayback Machine, familiar from this series. As explained above, these do not guarantee you will clear the wall of prior-use rights. But they become material for negotiation and objections if the worst happens, and against bad-faith filings (cases where someone files precisely because they know your name), they can become grounds for challenging the registration. Records are not wasted here either.
A little about my own case
For reference, let me tell you about my own name. The name ALAUDAE was inspired by classical Latin. I originally intended to use "Alauda," but when I searched, it was already in use: as the name of a love hotel. So I changed it to "Alaudae." The importance of searching before naming is something I experienced myself.
As for a trademark, considering the scale of my business and the fact that this name is an old word that anyone may freely use, I have not registered it. It is exactly the choice described in this article: knowing the mechanism, and deciding not to register for now.
There is one more thing about names that I learned the hard way. I have rebuilt my craft store website several times, and as a result, old information still weighs down my search results today. A name, and the structure of a site, should be changed as little as possible once decided. Take your time deciding; once decided, raise it. I have come to feel that this is the shortest road, both for search engines and for growing a name.
If Someone Has Already Taken It
If you ever discover that your shop name has been registered by someone else: first, do not panic and abandon the name.
Trademark systems have mechanisms for third parties to submit observations before registration, and procedures to seek cancellation or invalidation after registration. In particular, a filing made by someone who knew of your name and moved to take it may be rejected as a bad-faith filing. However, these procedures are heavy for an individual to fight alone, and the costs must be weighed against the benefits. At this stage, it is time to consult a specialist. In Japan, invention associations and chambers of commerce offer free intellectual property consultation desks in many regions; similar public services exist in many countries.
And if, at that moment, you hold dated records of your use of the name, the consultation will proceed concretely, and in your favor.
Closing: Know That Names Play by Different Rules
To summarize:
- Unlike photographs, a name is not protected from the moment you use it. The right belongs to the first to file
- First, search your name in the official trademark database, free of charge. Check both directions: whether it has been taken, and whether you are infringing
- Whether to register depends on how central the name is to your business. It costs money, so it is not for everyone
- If you do not register, keep dated records of your use of the name. They become negotiation material if the worst happens
- If you find the name already taken, consult a specialist before abandoning it
In the words of this series: protect your ideas with records, protect your photographs with rights, and protect your name with an informed choice. Losing a name without knowing the rules, and deciding with full knowledge not to register for now, may look the same on paper. They are completely different in meaning.
Take one quiet moment to check on the name you have been raising with such care. And then, back to the joy of making.
