Section 69 of the UK’s Companies Act 2006 allows a brand owner to make a complaint against a company name that appears to have been registered in order to take advantage of goodwill built up by an existing brand or trademark. Previously, it was possible to object to a registered company name only on the basis that it was too similar to another registered company name. The new regime allows a brand owner to object to a registered company name if it is (i) the same as that associated with the brand owner and in which the latter has goodwill, or (ii) sufficiently similar to such a name that its use in the UK is likely to mislead by suggesting a connection between the company and the brand owner.
“ALTHOUGH THE COCA-COLA DECISION WAS IN ESSENCE A DEFAULT JUDGMENT, IT DEMONSTRATES THAT THE ACT CAN BE USEFUL TO BRAND OWNERS BY PREVENTING “OPPORTUNISTIC” COMPANY NAME REGISTRATIONS”
The first case under the Act was brought by Coca-Cola Limited against the registration of the name ‘Coke Cola Limited’ in late 2008. The respondent did not file a defense within the one-month period specified by the adjudicator; therefore, they could treat the respondent as not opposing the application and made an order in accordance with Section 73(1) that it change its name. The Act also seeks to remove the need for brand owners to go to court. Instead, it allows them to apply to the Company Names Tribunal and to rely on the principles of trademark law or passing off to object to the use of a registered company name that incorporates – or is confusingly similar to – its trademarks. It therefore seems to be a more efficient and less expensive route for a brand owner to prevent a party from seeking to benefit from its goodwill
and reputation.
However, this procedure applies only to registered company names and not where a party is using a brand owner’s brand or trademark as a trading name. In addition, the procedure has the potential to be quasi-litigious, requiring evidence of goodwill and allowing the parties to submit witness statements and oral evidence where the complaint is defended. We will have to see whether the Company Names Tribunal provides the alternative envisaged or simply becomes a new first stage of the litigation process.
We will follow-up whether the Company Names Tribunal provides the alternative envisaged or simply becomes a new first stage of the litigation process.
Source: IP Review
