COMPANY NAMES TRIBUNAL, APPLICATION BY MILLER ROSENFALCK LLP, O-036-11, 27 JANUARY 2011 AND APPLICATION BY TEKTONIX INC, O-025-11, 4 FEBRUARY 2011
The Company Names Tribunal (the Tribunal) deals with applications under section 69 of the Companies Act 2006. Section 69 allows a company to file a complaint if a third party has registered a company name which is either (i) the same as a name associated with the applicant in which it has goodwill; or (ii) sufficiently similar to such a name that its use in the UK would be likely to mislead by suggesting a connection between the third party and the company.
Miller Rosenfalck LLP
Miller Rosenfalck LLP, a firm of solicitors, applied to the Tribunal for a change of name of a company registered as EUROPEAN BUSINESS LAWYERS LIMITED (EBLL). The name associated with Miller Rosenfalck on which the firm relied was its domain name europeanbusinesslawyers.com. The firm also used 'European Business Lawyers' in/on its logo, website, and letterheads. EBLL denied that Miller Rosenfalck had any goodwill in the domain name due to its descriptive nature.
The Tribunal held that Miller Rosenfalck had not shown that it had a reputation in the domain name that related to its business for the purposes of section 69. Given that many of Miller Rosenfalck’s existing and potential clients would be aware that they were dealing with or wished to deal with Miller Rosenfalck LLP, there was no evidence that clients would place significance on the domain name and e-mail address. The primary sign associated with the firm was the name Miller Rosenfalck. The Tribunal said that in light of the descriptive nature of the words and the nature of their use, Miller Rosenfalck should have provided evidence from third parties, such as clients, showing that the domain name was identified with them.
The Tribunal held that Miller Rosenfalck had not established goodwill in the name EBLL and the application failed.
Tektronix Inc, a U.S. company, made an application to the Tribunal for a change of name of Tektronix Limited. Tektronix Inc. submitted that Tektronix Limited's name was indistinguishable from Tektronix Inc's long-established and well-known name and trademarks (registered in the United Kingdom). Tektronix Limited argued that TEKTRONIX was not a well-known name or trademark. The Tribunal's decision was based solely on the written evidence submitted by each side.
The Tribunal said that under section 69(1)(a), Tektronix Inc had to show that it had goodwill or reputation in the name TEKTRONIX in the United Kingdom at the date of its application to the Tribunal (as opposed to in the period before Tektronix Limited was established).The Tribunal said that it was essential that reputation existed in the United Kingdom (although it was not necessary to have a business and goodwill in the United Kingdom)1.
The Tribunal made the following comments on Tektronix Inc's evidence:
- the evidence from Tektronix Inc's trademark attorney that Tektronix Inc. had traded for over 60 years and that its products had featured extensively in the UK trade press, was largely unsubstantiated and amounted to hearsay;
- the context of much of the Internet evidence submitted was clearly American and there was a lack of evidence which was UK-based;
- there was no direct evidence from anyone within Tektronix Inc; and
- assertions of reputation carry little weight without supporting evidence, such as turnover, promotion, length of use and the context of the use of the name.
The Tribunal held that Tektronix Inc had not established either goodwill or reputation in the United Kingdom. Tektronix Inc's application therefore failed