What's In A (company) Name? That Which Can Be Opposed At The Company Names Tribunal

• Published date: 19 December 2022
• Subject Matter: Corporate/Commercial Law, Intellectual Property, Corporate and Company Law, Trademark
• Law Firm: Gowling WLG
• Author: Mr Charlie Bond, Kate Swaine and Regina Damigou

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:

1. The company name is the same as a name associated with the applicant and in which they have goodwill; or
2. 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...