Brand Owners Get New Right to Object to Company Names in the UK
06 October 2008
As of 1 October 2008, brand
owners with goodwill in the UK have a "right to object" to company
names that include their trade marks or similar marks. This new
right to object should prove very useful for brand owners wishing
to take action against "bad faith" company name
registrations.
Under the system in place prior
to 1 October 2008, brand owners had very few options available to
them if someone registered a company name using their trade mark.
As a result the new right to object (which arises from the
implementation of the Companies Act 2006) will prove very useful to
brand owners against company name squatters.
The new right to
object
The new law allows a brand owner with goodwill in the UK to take
action where a company name is registered that is:
- the same as a name in which
the brand owner has goodwill; or
- sufficiently similar to such
name that its use within the UK would be likely to mislead by
suggesting a connection between the company and the brand
owner.
If the brand owner is
successful then the company will be forced to change its name.
However, the change in name will not be forced if a company can
show that:
- the name was registered before
the brand owner's goodwill was acquired;
- the company is operating under
the name, has incurred substantial start up costs or used to
operate under the name and is now dormant;
- the name was registered as
part of company formation business and is available for sale to the
brand owner;
- the name was adopted in good
faith; or
- the brand owner's interests
are not adversely affected to any significant extent.
Even if the company can prove
they fall within (a), (b) or (c) above the name will still be
changed if it can be shown that the name was registered to try and
obtain money from the brand owner or to try and prevent the brand
owner registering the name.
To exercise this right to
object a brand owner must apply to the Company Names Adjudicator,
which is the UK Intellectual Property Office ("UK-IPO"). The brand
owner and company will both have an opportunity to file evidence
and, if required, a hearing will take place before a decision is
given.
What does this mean for
brand owners?
Brand owners need to find out
when company names that conflict with their rights have been
registered. The solution to this is a company name watching
service. Details of Field Fisher Waterhouse's company name
watching service can be found here. At an annual fee of £150 per mark watched this
is going to be a very useful tool in any brand protection
policy.
The new right to object
provides a much simpler and less expensive way of challenging "bad
faith" company name registrations than existed prior to 1 October.
While the power to object will not be of any assistance where a
company name is registered innocently and in good faith, it is
still vital that brand owners find out about these registrations:
good faith and innocence are not a defence to trade mark
infringement or passing off and so the company name watching
service will still be useful in providing brand owners with
information about potential infringers quickly and in a
cost effective manner.
Also, brand owners need
to act quickly and apply to the UK-IPO before the company
starts trading. Our vast experience in UK-IPO actions means Field
Fisher Waterhouse is ideally placed to assist brand owners in
making these applications.
Finally, it should be
remembered that there is no link between company names and trade
marks; and registering a company name gives no right to trade or
stop others trading under the name. As a result we would recommend
that a trade mark watching service should be
considered as well by brand owners that do not already subscribe to
such a service. Details of Field Fisher Waterhouse’s trade mark
watching service can be found here.
For further information, please
contact
Mark Holah or your usual contact.