Clear to register, but safe to use?

An interesting trade mark story from the beauty world this week provides a useful reminder that a “clear” trade mark search does not necessarily mean that a mark is clear to use.

Bobbi Brown’s Jones Road Beauty has announced that it will rename its newly launched “Wide Awake” concealer after it emerged that Molly Sims’ YISE Beauty was already selling a “Wide Awake” eye cream.

Commenting on the issue on an Instagram story, Brown explained that Jones Road had conducted a trade mark search before launch which showed no other ownership of the name.

From a trade mark perspective, this is where the story becomes particularly interesting.

Searching the relevant trade mark registers is an essential part of any brand clearance exercise, but it is only one part of the picture. Depending on the jurisdiction, earlier unregistered use may give rise to enforceable rights. Even where it does not, existing marketplace use can create other significant commercial risks, from consumer confusion and negative publicity to the considerable cost and disruption of changing a product name after launch.

This is particularly important in fast-moving, crowded sectors such as beauty and fashion, where product names proliferate and not every name in use will necessarily appear on the trade mark register.

Effective brand clearance should therefore ask more than simply “Is this mark registered by a third party already?” Wider searches of the marketplace, including online retailers, search engines, social media and competitor activity, can help identify potential problems that register searches alone may not reveal.

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