How to defend your UK company name against an objection at the Company Names Tribunal from another business

What should you do if you receive an objection at the UK Company Names Tribunal from another business, objecting to your choice of company name?

 

It may be possible to defend your company name, even if it is identical, or very similar to another’s trading name.

 

Who administers the proceedings?

The Company Names Tribunal is part of the United Kingdom Intellectual Property Office. Company names adjudicators issue decisions. They are experienced hearing officers and are accustomed to dealing with trade mark opposition matters.

 

What are the procedures?

If you receive notice of a complaint, then you will have two months in which to file a defence. This deadline is important, as in several past cases there has been no defence filed and applicants have won by default.

 

If you respond, then there is an opportunity to file evidence and the parties have the right to request a hearing, although this is often not taken up. The parties can also file written legal submissions.

 

What are the costs?

The Defendant pays £150 government fees (as at September 2016) on filing a Defence and a further £150 government fees, when filing evidence. This excludes legal adviser’s costs.

 

Can legal costs be recovered, if successful?

It is usual to instruct an intellectual property expert to argue on your behalf, because they can advise you on the merits, and they have experience of case law, rules, the Office and the key issues that will lead to success, and they therefore improve the prospects of success.

 

If successful, you are likely to be awarded a contribution towards any legal costs, including the recovery of government fees. The UK Intellectual Property Office generally follows a standard scale of costs which does not always fully compensate the successful party, but this can be deviated from in exceptional circumstances.

 

How can we win the case?

-You may be able to argue the names are not the same, or sufficiently similar. Axals Corp. successfully argued that AXA was different.

-The Applicant may fail to show that it owns any goodwill.

 

Can we rely on any defences?

Potentially yes, if you can show…

• that your name was registered before the applicant commenced the activities relied upon to show their own goodwill; or
• that your company operates under the name, or is proposing to do so, and has incurred substantial start-up costs in preparation, or was formerly operating under the name and is now dormant; or
• that the name was registered in the ordinary course of a company formation business and the company is available for sale on the standard terms of that business; or
• that the name was adopted in good faith; or
• that the interests of the applicant are not adversely affected to any significant extent.

 

It may be appropriate to raise several of these defences.

 

In one example of a small company succeeding against an objection from a much larger company, IBM objected to the company name of IIBM Ltd. The UK Intellectual Property Office felt that there had been good faith, partly influenced by the fact that the defendant was “a young man with ambition, but little practical experience of business”.

 

The first three defences are not applicable, if it can be shown that your main purpose in registering the name was to obtain money, or other consideration from the applicant, or to prevent them from registering the name.

 

Other considerations

If the company is operating under the company name, a defence may well be available, but the other business could also consider an action for passing off or trade mark infringement.

 

What if our defence is not successful?

The Company Names Tribunal can order a change of name and can exercise powers to choose the new name. This is in addition to any award of legal costs.

 

Please do not hesitate to contact us at trademarks@pagewhite.com, if you would like further assistance in defending a company name.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis and answer any questions about Brexit. Please note that the law may have changed since the date this was first published in September 2016.