What's in a Name - Companies Act 2006
Company law in the UK changed dramatically with the introduction in 2006 of the new Companies Act 2006. Among the changes were some of particular interest to the intellectual property community. One of the main changes of interest was the creation of the Company Names Adjudicator, a new role established under the Companies Act. The adjudicator’s first ruling represents a victory for trade mark owners.
Under the Act a complaint can be filed if a new company is incorporated with an objectionable name. In simple terms, if you are an established company with goodwill in your name, you can complain to the adjudicator if you think either that a company’s name is the same as yours or that it is so similar as to be confusing because it suggests a link between the new company and yours.
The first case that came before the adjudicator was, in many ways, an easy one to decide. In February 2008 some bright spark decided to register a variation of one of the world’s best-known trade marks, Coca Cola. The name registered was ’Coke Cola Limited’. Coke Cola Limited had no connection with the drinks giant, Coca Cola, and the latter filed a complaint under the new system. Coke Cola Limited did not respond and the adjudicator ordered that Coke Cola Limited change its name within a month or she would choose a new name on its behalf. It was also ordered to pay costs to Coca Cola.
The UK is not the only place to see enhanced protection for names - the level of protection has also increased in Guernsey, with the advent of the Companies (Guernsey) Law, 2008 (as amended). Part III of the new law deals with company names, seals and records. Sections 21 to 29 inclusive make extensive provision in relation to company names. Section 21 sets out the compulsory elements of a company’s name, such as ’Limited’, ’Limited by Guarantee’, ’Mixed Liability’, ’Protected Cell Company’ or ’Incorporated Cell Company’. Section 22 sets out exemptions from the requirements of section 21: for example, in relation to charitable companies.
The important sections for IP purposes are section 24, which deals with prohibited names, and sections 28 and 29, which deal with enforcement of the provisions relating to company names and the right to object to a company name.
Section 24 lays the groundwork for a company’s right to protect its name. The section provides that a company may not have a name which is the same as a name that currently appears on the Register of Companies or a name that has been reserved.
The rights of trade mark owners are expressly preserved, with section 24(4) providing that a company must not have a name that, in the Registrar’s opinion, is likely to cause the public to
confuse the company with another person already established in Guernsey, or a trade mark that has been registered under Guernsey’s trade mark legislation (unless that person or trade mark owner has agreed to this use, for example, by way of a licence arrangement).
These provisions represent a big step forward for registered trade mark owners (and owners of trade marks that have not been registered). Although there were some restrictions on names that could be registered under the old law, these provisions extend considerably the scope for the owner of a trade mark to prevent the registration of a company name. If Coke Cola Limited sought to register under this name in Guernsey, we would expect the Registrar to adopt a similar position to that adopted by the UK adjudicator. However, what will be very interesting in the future is the way in which the Registrar deals with less-clear-cut cases and the difficult job of judging whether a given name falls foul of the ’accepted principles of morality’ or public policy test.
This article is adapted from the work of Elaine Gray, Group Partner at AO Hall, Guernsey. The full version appeared in the firm’s electronic newsletter, Red Letter. To contact Elaine call 01481 723723 or email elaine.gray@aohall.com.