Quite a lot, it seems. In the UK, the first decision of the Company Names Adjudicator has been issued and it represents a victory for trade mark owners.
Company law in the UK changed dramatically with the introduction in 2006 of the new Companies Act 2006. Amongst the changes were some of particular interest to the intellectual property community. One of the main changes of interest was the creation of the ‘Companies Names Adjudicator’, a new role established under the Companies Act.
Under the Companies 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 that the name is confusing (because it suggests a link between the new company and yours).
The first case which 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.
Coca Cola filed a complaint under the new system. Coke Cola Limited did not respond and the Adjudicator had little difficulty in making an order that Coke Cola should change its name. 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 through 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 which currently appears on the Register of Companies or a name which 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 which, in the Registrar’s opinion, is likely to cause the public to confuse the company with some other person already established in Guernsey or a trade mark which 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). In deciding these matters, the Registrar may take into account whether the names are the same or similar and whether the company engages in the same trade (be that goods or services) as that person or trade mark owner.
The Registrar also has power to refuse registration of names which are so misleading as to cause confusion or the use of which would be a criminal offence or which would be contrary to public policy or accepted principles of morality. In this respect, it is worth noting that the test in Guernsey is slightly different than that adopted in the UK, where registration can be refused if the use of the name would constitute an offence or the name is offensive (section 69 of the Act). The Guernsey test seems to be wider, so a company name which meets the UK requirements might nonetheless fail the Guernsey test for registration. One cannot help but wonder how an application based on the wellknown trade mark ‘FCUK’ might fare in Guernsey, which is often thought to be more conservative in matters of taste and morality than the UK. Very recently a Guernsey retailer is understood to have been cautioned by the police in relation to “offensive” material appearing on merchandise such as mugs.
So, what powers does Guernsey’s Registrar have in relation to company names? If the Registrar thinks that a proposed name or change of name breaches the Guernsey requirements, he can refuse to incorporate the company under that name or refuse to allow a change of name (section 28).
If the company name is already registered, the Registrar can direct the company to change its name within a specified period, so as to comply with the requirements. Failure to comply with such a direction is a criminal offence and exposes the company to the risk of being wound up.
That is all well and good for the Registrar, you may say, but what can a trade mark owner do about objectionable names? Section 29 provides the answer. Persons established in Guernsey and trade mark owners can apply to the Royal Court concerning a name which breaches section 24. Such persons can ask the Royal Court to set aside the company incorporation, the name or the change of name. The Royal Court has the power to make such order as it thinks fit, including an order directing the company and the Registrar to change the company’s name.
These provisions represent a big step forward for registered trade mark owners (and owners of trade marks which have not been registered). Although there were some restrictions on names which 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. Watch this space…