Hello Games, the British developer of the eagerly awaited computer game 'No Man's Sky', has settled a trade mark infringement action brought by Sky plc over the use of the word 'Sky' in the game's title.

Although No Man's Sky will be able to keep its name, no other details of the settlement have been disclosed - which begs the question, 'at what cost?'

Media giant Sky (formerly BSkyB) has developed something of a reputation for vigorously enforcing its trade marks in recent years.  In addition to the example given in the BBC's report referenced below (a claim by Sky that forced Microsoft to change the name of its 'SkyDrive' to 'OneDrive'), Sky successfully prevented the registration of the word 'Skype' as an EU trade mark in 2015, and in the last few days the courts have found in Sky's favour in a tussle with cloud services provider Skyscape.

For new businesses or brands, a trade mark infringement claim is no small deal.  At best it's a hassle, and will inevitably cost you money in dealing with the claim.  You could be forced to re-brand, thereby losing the goodwill you've worked hard to build in your brand to date.  And at worst, a damages award could be fatal to your business if you don't have the resources to pay it.

There are precautions you can take to minimise the risks before settling on a new brand name: 

  1. Avoid names that are similar to or sound like another well-known brand, particularly if there is any cross-over or similarity in the type of goods of services you will be offering.
  2. Do some research - use the internet to try and find out if there are other companies out there trading under the same or a similar name.
  3. Get a clearance search done - this will tell you whether anyone else has registered the same or a similar name as a trade mark.
  4. Check whether the domain name for your chosen brand name is available - and bear in mind that the .com domain is the most valuable.
  5. If in doubt, make something up!  Previously unknown words can make great brands (e.g. Google, Kodak, Haagen-Dazs), and can be easier to register as trade marks as they won't be seen as generic or descriptive.

If you need any advice or assistance with clearance searches, trade mark registration and/or trade mark infringement issues, please get in touch with us.