If someone tries to register a company name to which properly belongs to your organisation, there is an often overlooked procedure that allows you to take action. Commercial Law specialist, Laurie Heizler, explains…
Since 2008, a mechanism has been in place to prevent registration at Companies House of certain company or trading names that are seen to be similar to those existing – the Company Names Tribunal
What is the Company Names Tribunal?
The Tribunal is based at the UK Intellectual Property Office in Newport, South Wales and staffed by adjudicators who have experience of trade mark disputes. It operates in accordance with the Company Names Adjudication Rules 2008/1738 made under section 69(1) of the Companies Act 2006.
When can I apply to the Company Names Tribunal?
When a company name has been registered “opportunistically” – in other words, with the primary intention of preventing someone else with a legitimate interest from registering it.
Opportunism can sometimes take the extreme form of “blackmailing” the innocent party into buying the registration for an inflated price. This can be a very serious matter, especially where the registration is of a name that might be used by a legitimate new business or a venture that has resulted from a merger.
Do I need to have registered my company’s name?
No. If you can show “goodwill” in a trading name which has been the subject of the opportunistic registration, you can apply to the Tribunal.
The requirement to show goodwill is something held in common with trade mark litigation. If your brand and or trading name is being misused, you may be able to run a “passing off” case or an infringement action in parallel to an application to the Tribunal.
What arguments could I be facing?
There are several defences available to company name registrants. These include:
- precedence (having rights to the name in the first place)
- whether the registrant’s company name incurred set-up costs or is dormant
- the name was that of an “off the shelf” company and sold on standard terms
- if it was adopted in “good faith” (what constitutes good faith needs to be argued and many Tribunal cases turn on this point)
How would I win?
If the registrant fails to defend the case successfully and in accordance with the rules of the Tribunal, it may be ordered to change the name. If it fails to do so, the Tribunal may determine a replacement name and order the registrant to adopt it regardless of any further argument. Fixed costs will generally be awarded to the innocent party.
Though not an alternative to trade mark proceedings, if a trading name is similar to the opportunistically-registered company name, a Tribunal application is a useful addition to the range of remedies that may help to prevent a party from obtaining unlawful advantage by misappropriating a valuable name and its goodwill.
If you consider that your company name or trading name is being misused, at Dutton Gregory we have the expertise to help you. For further information, please contact Laurie Heizler (l.heizler@duttongregory.co.uk) on 01962 624423.
