While sometimes overlooked as a mechanism to enforce a business' intellectual property right, the Company Names Tribunal (the Tribunal) is a forum that can be used to deal with companies which have adopted names that are identical or confusingly similar to existing brands.
Why the Company Names Tribunal?
Firstly, it is important to emphasise that the Tribunal is not a substitute for passing off or trademark infringement proceedings. Instead, it provides an alternative mechanism that enables brand owners to enforce their intellectual property rights in the UK and force a company to change a problematic registered company name. It has a number of benefits.
1. Preliminary method of resolving trademark disputes
Applications filed at the Tribunal can offer a way of resolving trademark disputes at a preliminary stage. Provided brand owners proactively monitor company incorporations at Companies House, the Tribunal enables businesses to resolve disputes at the outset of a company's life. Generally, companies are incorporated before they begin trading substantively and building up rights and goodwill in their company name. This means that newly incorporated companies tend to be more willing to rebrand, given that changing their company name would not be overly burdensome or disruptive. The converse of this is that when a company is ignored for a period of time and they build their business, it can be more difficult to force a change of name, meaning the considerably more expensive option of court proceedings will likely be necessary.
2. Parallels with trademark opposition and infringement proceedings
The provisions of section 69 of the Companies Act 2006 mirror those of the Trade Marks Act 1994 – they allow a challenge to a company name in the following circumstances:
- The company name is the same as a name associated with the applicant and in which they have goodwill; or
- The company name is sufficiently similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the applicant.
The Tribunal deals with applications made under section 69 and provides remedies for companies that are aggrieved by the registration of a company name in which they have goodwill or reputation. While it is not necessary for a complainant to have a registered company name, it must provide evidence of goodwill or reputation in the name being challenged. In establishing goodwill and reputation, the Tribunal will rely on case law developed in trademark proceedings.
Due to the shared similarities in the nature of the proceedings, brand owners may be able to run a "passing off" or trademark infringement claim in parallel to an application to the Tribunal. In addition, success in the Tribunal can be useful in persuading an infringer to fully rebrand without the need for full blown court or trademark registry proceedings.
3. Quicker and cheaper than trademark and "passing off" proceedings
When compared with infringement proceedings before the Intellectual Property Enterprise Court (IPEC), the Tribunal represents a more affordable and efficient avenue for businesses to enforce their intellectual property rights in simple cases albeit only addressing company name use. While filings fees to issue a claim in the IPEC can amount to £10,000, the relevant fee for filing an application with the Company Names Tribunal is £400.
In terms of timings, a complaint to the Tribunal can be resolved swiftly, often in months, whereas court proceedings from issue to trial will likely last over a year.
4. Remedies are effective
If an application is successful, the Tribunal will order a change of company name. Where the order has not been complied with, the Tribunal can exercise powers to force Companies House to change the company name. In most cases, the successful party will also be awarded a contribution towards any legal costs, including the recovery of any fees paid in filing the application.
It is important to note that the Tribunal's powers are limited to the remedies described above. If other remedies, such as damages or injunctions are sought, brand owners will need to issue a court claim for trademark infringement or passing off.
Summary
Businesses considering filing a complaint under section 69 of the Companies Act 2006 should seek to:
- Establish if the disputed name is in use. If it is, and has been for a reasonably long period of time, then the Tribunal may not be suitable to resolve the issue;
- Give notice to the other party of the intention to bring Tribunal proceedings. This may avoid any proceedings being necessary if the opposing party simply changes their company name; and
- Obtain legal advice. Although relatively straightforward, it is still important to get a Tribunal complaint right to avoid it being rejected when it is filed.
If you are uncertain about the process of commencing Company Name Tribunal proceedings and require further information, we are happy to help so please do get in touch.