Protecting a company’s name
Distinctive company names and brand names are valuable business assets. They may be protected by actions at common law for passing off and, if registered as such, by suing for trade mark infringement. Such litigation is expensive, time consuming and the results can be uncertain. Steps should be taken to ensure that, as far as possible, the names are protected by simpler and cheaper means.
Registering each name as a company name
Registration as a company serves to stop the identical name being registered by anybody else and also serves as a warning which may discourage the registration of similar names. As Companies House will accept for registration a name which is very similar, even though not identical, to an existing name, it may be sensible to register alternative spellings or versions of the name as separate companies. Such companies may be kept on the register indefinitely as dormant companies, blocking registration by others at very modest cost. A dormant company will have to file an annual return and dormant accounts each year, paying the annual account fee of £13 (for 0n-line registration).
Registering appropriate names and logos as trade marks
Registration as a trade mark confers legal protection within the categories of goods or services within which the mark is registered.
Even if the business is not presently trading on the Internet or planning to do so, appropriate domain names should be reserved now to block registration by others.
In-house systems should be established to ensure that unauthorised use of any of the company’s names is noted by staff, reported to a senior person with responsibility for this area, and that appropriate action taken.
Swift response to infringement
It is essential that action is taken quickly once the company becomes aware of any actual or potential infringement of its name. Both practical advantage and common law rights can be lost by allowing another business to become established under a disputed name.
Any infringement should be noted and all details recorded. In many cases infringement will be inadvertent and a warning letter will be effective to stop the use of the name. Potential actions may lie for passing off or trade mark infringement. The powers of the Registrar of Companies to order a change of name may provide an effective remedy without the expense or hazards of court action. Under new provisions of the Companies Act 2006, powers have been given to a Company Names Tribunal to remedy the situation where a company has been registered with the intention of extracting money from the complainant or to prevent him from registering a name in which he has goodwill (often called ‘opportunistic registration’).