The Company Names Tribunal and Trademarks
First and foremost, the tribunal deals with claims made under sections 69 (1) (a) and (b) of the Companies Act 2006. It was established on 1st October 2008 in order to provide brand owners with a cost effective method of enforcing their trade marks against the registration of similar company names. Since the introduction of the CNT it has proven to be a useful tool against so called “opportunistic” company name registrations, although there are some limitations to what it can achieve.
These opportunists often adopt a strategy to register one or more variations of a name of a well-known company with the hope that the latter company will end up buying the registration. Also in some cases where someone might know that a merger is about to take place between two companies, they will go and register variations of the name that the newly formed commercial entity is likely to acquire.
If your company wish to stand in the way of a third party using a mark which you feel you are entitled to then it will be necessary to prove a few vital points. Firstly we should note that it is possible for the registration holder to rely upon the following defences if an application is made:
· that the name was registered before the start of the activities on which the applicant relies to show it has goodwill/reputation; or
· that the 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; or
· that 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’); or
· that the name was adopted in good faith; or
· that the interests of the applicant are not adversely affected to any significant extent.
If the registration holder fails to prove any of the above points then the application made to the Company Names Tribunal will succeed (assuming that the applicant has a satisfactory goodwill/reputation in the name or a similar name).
Furthermore, an application can also succeed if the applicant can prove that the registration holder’s main purpose in registering the company name was to obtain money, or some other consideration, from the applicant or to prevent the applicant from registering the name. This is identical to the scenarios mentioned above.
If you look back at the defences again you will notice that one of them mentions the fact that the company is operating under the name. It should be stressed here that an application to the Tribunal is not an alternative to an action for passing off or trademark infringement.
The CJEU’s ruling on 11 September 2007 in Case C-17/06 Céline SARL v Céline SAprovides a prime example of how difficult it can be to prove trademark infringement in respect of the registration of a company name, particularly where the company has not started trading. Therefore, for this reason it shows how vital the creation of the CNT has been for brand owners and will continue to be in the future.
A statistic which was made four years after the introduction of the Tribunal stated that of the 191 cases filed at the CNT to that date, 169 have been undefended, resulting in success for the applicant. Of the 22 cases which were defended, 11 still resulted in success for the applicant. The overall success rate for applicant therefore stands at approximately 94%.