New Scope for Brand Owners to Challenge Company Names

On 1 October 2008, new rules were launched giving brand owners more muscle to challenge the registration of confusingly similar company names.

The Companies Act 2006 came into force in October 2008, but the implementation of the new challenge provisions was initially expected to be delayed until October 2009. The necessary adjudication framework was built more quickly than anticipated, however, and the long-awaited adjudication scheme is now fully effective.

Under new Sections 69 – 74, brand owners can object to the registration of company names that are identical or misleadingly similar to trademarks in which they have prior goodwill, whether or not the brand is a registered mark. Challenges are filed before the the new Company Names Tribunal in proceedings resembling trademark oppositions, with submissions, evidence rounds and, where appropriate, hearings. The claims will be resolved by UK-IPO hearing officers appointed by Companies House. Decisions are subject to appeal to the High Court.

The changes are not appropriate for all cases, and particularly not where urgent action is needed to stop use that is causing or threatening actual damage. However, they promise cost-effective relief to brand owners whose goodwill is opportunistically misappropriated by new company names, regardless whether yet in use, which come too close to established brands. The new rules apply retrospectively, so it is possible to challenge company names registered before the new scheme came into force on 1 October 2008.

The new rules underscore the renewed value of regular company name watches, designed to identify company name registrations that consist of, or contain, a brand name. Previously such watches drew little enthusiasm because of the limited scope to object to names that were not yet in use. Now, however, brand owners can act on the results of such watches before damage arises through actual use.

We recommend English company name watches for core brands in use in the U.K. For more information or advice, please contact the Trademark Group at Jenkins.