October 2008
Name-calling: Greater Protection for Company Names
New provisions concerning company names came into force on 1 October 2008. These allow companies to better safeguard their company name by giving them remedies against opportunistic registrations that are comparable to those given by the dispute resolution procedures to take action against "cybersquatters" and domain name hijackers.
The Company Names Adjudicator Rules 2008, which give effect to sections 69-74 of the Companies Act 2006, provide for complaints by businesses or persons who have goodwill associated with a name, where that name has been "opportunistically" registered as a company name by someone else with a view to obtaining money from the Complainant, or to prevent the Complainant from registering the name.
What is meant by "opportunistic" company name registration?
Opportunistic company name registration share characteristics with "cybersquatting" in the field of domain names; for example, when someone registers variations of the name of a well-known company in order to get the latter company to buy the registrations.
Where?
The new proceedings will be administered by "The Company Names Tribunal" (the Tribunal) and each dispute will be decided by an adjudicator; this will be a hearing officer experienced in trade mark and trade name tribunal work, who is based at the UK Intellectual Property Office.
Who can apply?
From 1 October 2008 onwards, any business or person with goodwill or reputation in a name is entitled to apply to the Tribunal, not just prior registrants of company names. The new proceedings will also allow businesses or persons to prevent the use of their name and/or trade marks in a company name, where such a use misleadingly suggests a connection between the company and the Complainant. At the moment, a trade mark proprietor who objects to a company name which encompasses its trade mark - or a confusingly similar mark - has to seek relief via the courts. The new proceedings are expected to provide a cheaper and simpler alternative to such, often costly, court proceedings. However, disputes where someone believes that another company name registration is too similar to their own company name, but where there is no alleged opportunistic motive, will still be dealt with by Companies House. It should be kept in mind, that if a company name is used as a trading name, the common law tort of passing off may also be invoked. It should also be noted that if an application to the Tribunal does not fall within the scope of section 69 of the Companies Act 2006, the official fee will not be refunded.
