2

From 1 October 2008, there is a new right for individuals, partnerships or companies to object to the registration of a new company with the same or similar name as they use for their own business.

This new right has been established under the 2006 Companies Act which itself is being introduced in stages over a three year period. Until now it has been difficult for a business owner to object to the registration of a company name which they felt was too similar to their own name. In general protection could only be obtained by existing companies or by persons (legal or natural) who had registered a trademark to protect the name.

Taking such action was not easy and could be costly as in most cases action needed to be taken in the High Court, which does not come cheap.

Recognising this the new law attempts to make it both simpler and cheaper for someone to object to the registration of a name “too similar” to one with which they are associated – whether that is a registered company name, a business name, a trading name or a trademark. 

Grounds for objection

Any person will be able to object to a company’s registered name if the name is:

  • the same as a name associated with the objector and in which the objector has goodwill; or 
  • similar enough to such a name that its use in the UK would be likely to mislead by suggesting a connection between the company and the objector. For example until now a company called XYZ Limited could not object with any certainty to a new company called XYZ (UK) Limited or XYZ (GB) Limited. Now they can. Despite what some commentators are saying it XYZ Limited would be able to object to a company with the name XYZ Birmingham Limited (or XYZ Any Town You Like Limited) if XYZ Limited could prove that it had an established presence in Birmingham or wherever.

Defences to an objection

The 2006 Companies Act lists specific circumstances in which there will be a presumption that the company’s name was registered legitimately. These include that:

  • registration took place before the start of the activities on which the objector relies to show his goodwill; 
  • the company is carrying on business under the name; 
  • the company is proposing to carry on business under the name and has incurred substantial start-up costs in preparation; 
  • the name was adopted in good faith; 
  • the interests of the objector are not adversely affected to any significant extent.

If one of these presumptions applies, the objection must be dismissed unless the objector can show the respondent registered the name either to obtain money from the objector or to prevent him registering the name. In that case, the objection must in most circumstances be upheld.

If none of the presumptions applies, the objection must also be upheld.

Effect of successful objection

If an objection is upheld, the offending company name must be changed to one that does not raise an objection within the time prescribed by the adjudicator. If the company fails to do so, the adjudicator may determine a new name for the company.

Company Names Adjudicator

A new company names adjudicator will consider objections against a company’s registered name under these new rules as from 1st October 2008. The first adjudicators will be drawn from members of the UK Intellectual Property Office Tribunals.

Further details here

If you would like personal advice on this subject please email james@jamesgreenandco.co.uk

2 Responses to “The Companies Names Adjudicator : New Protection for Business Names”

  1. James Green says:

    You keep using terms like “they registered their brand” which implies that they have taken out a trademark or registered mark. I doubt very much that they have. Registering a company gives you no rights to a name unless you also trademark it. You can get protection if someone registers a name similar to yours but this doesn’t seem the case here. You say also that the packaging on your products is intended to be unique and eye-catching but again unless you have registered some sort of trade mark there is not much you can do to stop someone making a near copy. If you believe that another business is trying to pass themselves off as your business then you can take action in the civil courts for “passing off”. From what you say you may well have a good case but it will cost you a lot up front and even if you win how do you know the other business can afford to pay your costs. Hard one.

  2. Dawn Tarr says:

    Dear ___
    I am contacting you regarding a similar business naming issue and would like some advice on the matter. It has come to my attention that a business in the same consumer market as myself (handmade cosmetics) is trading under a similar company name to my own.
    My business (http://www.tubsuds.co.uk) began trading in April 2010 and the website was published online around July 2010. Tubsuds UK ltd sells Handmade Soaps, Massage & Scented Candles, Bath Bombs, Bath Truffles and Bath Soaps with a great emphasis on high-quality and luxury.
    The company which has caused me to seek guidance on this matter is named “Cheeky Suds” (http://www.cheekysuds.co.uk) which also specialises in handmade soaps (though the term handmade is a subjective one with particular reference to the melt-and-pour soaps they sell) and other cosmetics. They registered their brand in September 2010, after Tubsuds had already been trading for online for at least five months.
    The company has also very recently created Facebook & Twitter pages (April 2011) advertising chheky suds. There is even an entry on Twitter dated 14th April ‘thanking’ a graphic designer for the creation of the logo!
    The areas of concern are such:
    1. “Cheeky Suds” sells products to the same market as Tubsuds. Tubsuds was established and had been trading using its official website long before Cheeky Suds was (registered Sept 2010, website published April 2011). I believe that the efforts of Tubsuds with regard to advertising and gaining positive consumer feedback could be assisting Cheeky Suds gain additional consumers through potential association and can only be to Tubsuds’ detriment.
    2. The Cheeky Suds logo uses identical font type to that of Tubsuds, another issue which will only result in establishing an association between the two companies, something which I do not wish for.
    3. Cheeky Suds sells products which appear almost identical to the ones which Tubsuds has created. Specifically the Peppermint and Lavender Foot Soak (http://www.cheekysuds.co.uk/ourshop/bath-salts-and-foot-soaks/peppermint-and-lavender-foot-soak).
    The packaging on this product (especially the ribbon and tag) is very similar to the packaging on the products which I have been selling since before this company was established.
    Example: (http://www.tubsuds.com/#!mass–and-eo-candles-/productsstackergallery9=0). The packaging on my products is intended to be unique and eye-catching, so if a rival company copies this, it will be difficult to differentiate between the two.
    Could you please advise where I stand with this? The company I have created took years of planning, hard work and creativity, so I feel aggrieved that a rival company has appeared which seems to take a significant proportion of my intellectual property and attempts to pass it off as their own.
    Thank you & Kind Regards

Leave a Reply