The Company Names Tribunal (CNT) deals with:
“Complaints about cases where a company name is registered for the primary purpose of preventing someone else with legitimate interest from registering it or demanding payment from them to release it.”(Source: gov.uk)
Established on 1 October 2008, brand owners can now protect their trade marks from the registration of similar company names, in a cost-effective way.
Therefore, the CNT is a valuable tool against “opportunistic” company name registrations.
What are “opportunistic” company name registrations?
The CNT provides the following definitions as examples of opportunistic company name registrations:
- The registration of one or more variations of a well-known company name to get the existing company to buy the registrations
- Where someone is aware of a merger that’s about to take place and registers one or more name variations that the newly formed company may require
In both cases, the registration holder’s purpose is to cash in on the other company’s fame. That’s what makes them opportunistic.
How does the Company Names Tribunal work?
A brand owner can bring proceedings, at any time, where a UK registered company name, the name of a limited liability partnership (LLP), or the name of an overseas company registered in the UK, is either:
- The same as a name associated with the brand owner in which he enjoys goodwill or reputation in the UK, or
- Sufficiently similar to a name that’s in use in the UK, to mislead by suggesting a connection between the registered company and the brand owner
All they have to do is lodge the official application form, CNA1.
Registration holder defences
Usually, an application to the CNT will succeed unless the registration holder can prove that the:
- Registration of the name happens before the start of the activities on which the applicant relies to show it has goodwill/reputation
- Company is operating under the name or is planning to do so and has incurred substantial start-up costs, or was operating under the name but is now dormant
- The name was registered in the ordinary course of a company formation business, and the company name is available for sale to the applicant on the standard terms of that business (an ‘off the shelf company’)
- The name was adopted in good faith
- Interests of the applicant are not adversely affected to any significant extent
However, it’s worth pointing out that applications satisfying the first three defence criteria above are likely to succeed if the applicant proves the registration holder’s main reason for registering the company name was to either get money from the applicant or prevent them from registering the name.
Looking after your brand
The Company Names Tribunal is good news for anyone with goodwill in a brand name and registering it as a company name.
In the past, if a new company traded using the same name, the original brand owner would bring an action for trade mark infringement (registered trade mark rights), or for passing off (unregistered trade mark rights).
However, the CNT provides an additional line of attack, solely based on goodwill in the proposed name or similar name.
Moreover, because the definition of “goodwill” includes “reputation of any kind”, the qualification requirements appear somewhat lower than those usually required for passing off.
This opens up the possibilities for objection where opportunistic registrations are concerned, a real plus for brand owners.
For advice and help with approaching the Company Names Tribunal: