In the September 2008 IP e-bulletin, we reported that the Company Names Adjudicator Rules 2008 (the Rules) were to come into effect from 1 October 2008. The Coca-Cola Company has become the first successful applicant.
The Rules had been brought in as a result of Section 69 of the Companies Act 2006 (CA 06), which created a new right for any person/company to object to a company names adjudicator if a company's name is either the same as one in which the applicant has goodwill or is so alike such a name as to be likely to mislead by suggesting a connection between the company and the applicant.
It is hoped that Section 69 of the CA 06 and the Rules will strengthen the power of trademark owners to prevent other companies taking advantage of valuable trademarks and associated goodwill. The UK Intellectual Property Office, rather than the High Court, now deals with applications under the Rules. Previous laws only prevented the incorporation of a company, if its name was identical to that of a previously incorporated company. There was also a right to object to a company name that was too like another's, but that law was weak and the whole process costly, as it required High Court action.
The first ruling under the new Rules was made on 3 December 2008. Coke Cola Ltd (the Respondent) did not file a defence/counter-statement within the time limits (one month) to the Coca-Cola Company's application of 1 October 2008, which stated that the Respondent's name was misleading and opportunistic and took advantage of the Coca-Cola Company's trademarks: Coke and Coca-Cola. The adjudicator used her discretionary power under Section 73(1) of the CA 06 to treat the Respondent as not opposing the application. The Respondent had until 3 January to appeal this decision or, by then it must have changed its name to a name that is non-offending or run the risk of the adjudicator changing it herself under the powers laid down in Section 73(4) CA 06. As of 5 January 2009, the Respondent does not appear to have changed the name.
The adjudicator also ordered the Respondent to pay £700 towards the Coca Cola Company's costs. This £700 is made up of the fees that the Coca Cola Company incurred in filing its application and statement of case under the Rules and not its legal fees.
It is reassuring to see the Rules being used in an effective and decisive manner. The Respondent's silence throughout the whole affair seems to indicate that it knew it was trading off the goodwill of the Coca-Cola Company and was at best just being opportunistic and at worst, misleading the public.