A new body, the Company Names Tribunal, is about to take up its function of adjudicating on opportunistic company name registrations
On 1 October 2008, the Company Names Adjudicator Rules 2008
(SI 2008/1738) will come into force, giving effect to ss 69-74 of the Companies Act 2006. Proceedings will be administered by the Company Names Tribunal and cases will be decided by company names adjudicators (who are also trade mark inter partes hearing officers), based at the United Kingdom Intellectual Property Office, in Newport (formerly the Patent Office).
A specific remit
Company names adjudicators will deal only with disputes about opportunistic company name registrations; that is, solely with applications (complaints) made under s 69(1)(a) and (b) of the 2006 Act. This section provides for complaints by businesses or persons who have a goodwill or reputation associated with a name, where that name (or a similar name likely to suggest a connection with the complainant) 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.
Company names adjudicators cannot deal with cases where someone feels that another company name registration is too similar to, or “too like”, their own company name but there is no suspected opportunism behind the registration. This sort of dispute or complaint is dealt with by Companies House.
Alternatively, if the company name is used as a trading name it may be actionable under the law of passing off. However, an application which is made to the company names adjudicator because the applicant is aggrieved that someone has a company name which is too similar, will not succeed simply on the basis that the holder is trading under the name and causing confusion.
Section 69(4) of the Act lists the following defences:
(a) that the name was registered before the start of the activities on which the applicant relies to show it has goodwill/reputation;
(b) that the company is operating under the name or is planning to do so and has incurred substantial startup costs, or was operating under the name but is now dormant;
(c) that the name was registered in the ordinary course of a company formation business and the company name is available for sale to the applicant on the standard terms of that business (an “off the shelf company”);
(d) that the name was adopted in good faith;
(e) that the interests of the applicant are not adversely affected to any significant extent.
It is very important to note that an application to the Company Names Tribunal will only succeed if the registration holder cannot show any of the above; or, even if the registration holder can show that it satisfies the criteria listed in (a), (b) and/or (c), that the applicant can prove that the registration holder’s main purpose in registering the company name was to obtain money (or some other consideration) from the applicant or to prevent the applicant from registering the name.
An application to the Company Names Tribunal must fall within the bounds of s 69. Applications outside its remit will not be refunded. Applicants do not have to have a registered company name, but must demonstrate goodwill/reputation in the name at the time that it was adopted by the registration holder as the company name.
If the application is successful, the adjudicator will order the respondents to change the company name registration to something which does not offend. If the registration holder does not do this, the company name adjudicator has power to order the registrar of companies to change the name to a name of the adjudicator’s choosing.
Further information is available on the Company Names Tribunal website www.ipo.gov.uk/cna .
Judi Pike, Company Names Tribunal at the UK Intellectual Property Office