3 mistakes when choosing your brand name that have already been made by other companies

3 mistakes when choosing your brand name that have already been made by other companies

Choosing the right name for your brand is not just a matter of creativity; it is also a strategic decision with significant legal implications. Many companies make mistakes when selecting their brand name, which can prevent them from registering it or even lead to legal disputes, reputational damage, or the need to start from scratch.

1. Legal issues due to the brand name

When selecting a trade name for your business, it is essential to conduct a prior trademark search. No matter how original or innovative your name may seem, one of the most common mistakes is choosing it without first checking whether an identical brand is already registered with the relevant authority. This could result in an opposition from the owner of the preexisting trademark, which could force you not only to abandon the registration process but also to stop using the chosen brand name in your business.

A clear example is Apple’s case with the “iPhone” trademark in Mexico. The Mexican company “IFone” had previously registered a phonetically similar name, and when the tech giant tried to use the term in that country, it faced an opposition claiming trademark infringement. Eventually, the Supreme Court of Mexico ruled in favor of IFone, recognizing its prior rights to the trademark in the telecommunications category.

A similar situation occurred with Zara when Inditex tried to register its trademark in China, only to find that another company had already registered it, preventing them from operating in that market for several years.

As these cases show, such situations are more common than one might think and are relatively easy to avoid. You simply need to perform a thorough trademark search in databases such as Spain’s OEPM (or the equivalent in your country) to prevent these unpleasant surprises.

2. Conflicts with competitors

In line with the previous point, choosing a name that is too like an already registered brand, especially within the same industry, can also lead to conflicts. Article 6 of the Trademark Law states that:
“Signs that are identical or similar to an earlier trademark and designate identical or similar goods or services shall not be registered if there is a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trademark.”

This risk of confusion, even if the similarity arose from inspiration and not an intention to copy, can trigger disputes with competitors. It may result in claims of unfair competition and an opposition to your trademark registration, one that the existing brand owner would likely win in court, ultimately leading to the rejection of your brand name.

3. Lack of clarity and originality in naming

Another common mistake is assuming that the more descriptive a name is of the business model, the better. However, this could violate the legal requirements established in the Trademark Law.

Article 5 of the law outlines several grounds for refusal when registering a brand name, including:

“[…]b) Those lacking distinctive character.

c) Those consisting exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods or of rendering of the service, or other characteristics of the goods or services.”

In other words, names that are generic or merely descriptive, those that don’t help identify a specific business origin, cannot be registered. Originality is not just a creative requirement, but a legal necessity for a successful trademark registration.

To avoid all these risks, it is essential to seek the expertise of a professional lawyers in intellectual property, such as the team at Letslaw, who can assess the viability of your trademark registration and anticipate potential legal conflicts, thereby maximizing your chances of success.