Fourth way to fight brand infringement

Dec 23 2008 by Will Sander, Dickinson Dees LLP

AS of October this year, brand owners now have another useful tool in their armoury if a company name is registered by a third party and is similar to their company name or trade mark (“brand”).

Brand owners can now make a complaint before the Company Names Tribunal (the “Tribunal”).

Prior to October 1, if a brand owner felt that a third party company had registered an infringing name, there were three possible forms of redress:

1. An application to the Secretary of State to issue a direction for the name to be changed.

2. Trademark infringement proceedings could be initiated if the brand was registered. One difficulty with using registered trademarks in relation to third party company names is that you need to establish that the company name was being used in the course of trade relating to the sale of relevant goods or services.

3. You could start a claim for passing off. This requires proof of goodwill in the brand, proof that the offending company is misleading customers into believing that it is associated with the claimant and that this is likely to result in damage.

As of October 1, the Company Names Tribunal can provide a fourth option. Clearly, given the statute in which it is set out, it is designed to address the issue of infringing company names specifically.

An applicant to the tribunal no longer needs to prove that it has suffered, or is likely to suffer damage. Nor does it have to prove that the trademark is being used to sell similar goods or services. The applicant simply needs to prove that its brand has “goodwill”.

Once it is established that there is goodwill in the brand and the offending name is sufficiently similar, the onus is on the offending company to prove a valid defence.

The Tribunal can order the offending company to change its company name and if it does not comply, can order the Registrar of Companies to make the change.

The fact that offending companies need to prove a valid defence is a useful addition to the methods of redress available and in many cases it should prove to be a more cost effective method of enforcing brand protection.

Will Sander is a solicitor in the company and commercial department at Dickinson Dees LLP.