News

October 2008

New Defences Against Company Name ‘Hijacking’

On 1st October 2008 new rules came into force under Sections 69 to 74 of the Companies Act 2006, which are likely to be of significant interest to trade mark owners. These rules will allow complaints to be filed against the incorporation of a company name, where the name has been registered with the intention of extracting money or some other form of consideration from the rightful proprietor of that name. This is known as an “opportunistic company name registration”. To be able to succeed in a complaint against the incorporation of such a name, the complainant’s name or trade mark must have goodwill and/or a reputation.

A complaint about an opportunistic company name registration must be made to the Company Names Tribunal, which is operated by the UK Intellectual Property Office.

What are the key aspects of these new rules?

• Any person or business with goodwill and/or a reputation in a name or mark can make a complaint to the Company Names Tribunal.
• The name in dispute does not have to be identical to the complainant's, but it must be similar enough that a connection between it and the new company is likely to be assumed.
• If the action is successful an order is made for the registrant to change the company name. If it fails to comply with that order, then the Company Names Tribunal may determine a new name for the company and order the Registrar of Companies to make the change, without further reference to the registrant.
• The rules are retrospective, so it is possible to object to a company name that was registered prior to 1 October 2008, provided it was registered with a view to gain either a monetary reward or some other consideration.

The Company Names Tribunal cannot deal with cases where it is merely believed that the new company name is too similar to an existing company name - i.e. an existing limited company. This type of dispute will continue to be dealt with by Companies House.

These new provisions mean that it will now be all the more important to monitor third party registrations of company names. Forresters can provide automatic watching services to do just that. For help or advice on how this could be of benefit to you, please contact us and one of our Trade Mark Attorneys will be pleased to help.