Brand Appeal

Spotlight on Company Names

The Company Names Tribunal is a division of the UK Intellectual Property Office. It provides a quick and relatively cheap forum (as compared to Court proceedings) for resolving registered company name disputes where it is asserted that someone has registered a company name that conflicts with an earlier used name. 

Complaints to the Tribunal are commonly directed towards newly adopted names. It is rare for respondents to be able to assert ownership of an earlier registration as a line of defence. Nevertheless, a frequent misconception of both respondents and applicants is that third-party objections must be based on an earlier registered name. As confirmed in Polycote Ltd v Polycoat Ltd, a valid challenge to a company name requires only that the applicant has established goodwill suggestive of a connection between the contested name and the applicant. There is no requirement for the applicant to have registered the name (in which it claims goodwill) as a company name or trade mark.

In the vast majority of cases, objections sail through undefended and result in an enforced change to the offending name. Defences are filed comparatively rarely and more often than not do not succeed.

Common lines of defence

Defences, when raised, are frequently based upon selection of the relevant name in good faith and/or the applicant’s interests not being adversely affected to any significant extent. Yet in either case there is an onus on the respondent to prove its claims through written submissions and supporting evidence. The evidential burden for demonstrating “genuineness” of a name selected in good faith is not high by legal standards but requires more than a mere discounting of awareness of the brand in which the applicant claims earlier rights. References to checks of the Company’s House register failing to identify a conflict carry little weight and documentary evidence supporting the selection process can be critical.

By way of example, despite claiming to have acted in good faith in adopting the director’s maiden name for its business, Scottish ice cream vendor Mackie’s Ice Cream Limited failed to substantiate the claim and was unsuccessful in withstanding challenge by the country’s leading ice cream manufacturer Mackie’s of Scotland.

Even where the respective parties are trading in obviously disparate commercial fields, the possibility of diversification or divestiture of the respondent’s business carries potential risks of adverse effect for aggrieved applicants. This was highlighted in the case of Prosegur Limited, where the respondent’s “membership organisation activities” were not considered to be in conflict with the applicant’s interests in alarms and security systems, but evidence submitted by the applicant showed the respondent’s sole director had previously worked for a rival security company.

Potential pitfalls for applicants

Despite the high rate of successful objections, the outcome of any application is fundamentally dependent on the degree of similarity and distinctiveness of the names at issue, the strength of the applicant’s evidence of earlier goodwill and the respondent’s ability to demonstrate that the contested name was adopted in good faith.

Failure to prove ownership of the requisite goodwill, or omitting to demonstrate goodwill pre-dating the registration of the offending company name, can be fatal to a positive outcome. Objections to offending company names being (incorrectly) filed in the personal names of the directors of an earlier company, or unsubstantiated by evidence of established goodwill or reputation, are common examples where claims fail. They highlight the importance of obtaining professional advice and representation before filing objections to third party company names.

Summary

The Company Names Tribunal provides a quick and efficient forum for resolving registered company name disputes. Applications to the Tribunal are often not defended and generally have a high rate of success, but must be handled with care to ensure a successful result.