How to avoid trade mark infringement when choosing your company name

Posted by on Nov 18th, 2019

Finding a name that suits your business is an exciting part of starting a new business venture. A company’s name forms an integral part of its brand and it is therefore important to ensure that the name represents your product and avoids a potentially devastating trade mark infringement.

Demystifying the myths

Many business owners are unaware of the importance of registering their company name as a trade mark. It is a common misconception that once a company name is registered at Companies House, or forms part of an internet domain name, the company has unrestricted rights to the name in conjunction with all aspects of the business.

The only protection given to a company name after it has been registered at Companies House is that other companies cannot register an identical or very similar company name. Registering a company name at Companies House does not therefore prevent another business from selling goods or providing services under an identical trading name.

If another business already holds a trade mark or unregistered right to the company name you are using without a licence then the holder of the trade mark may look to enforce their rights by way of infringement proceedings against you.

Another common misconception is that registering the company’s name as an internet address gives the company the right to own that name and use it exclusively. If a third party already holds a registered trade mark for the business name or logo that you are using or intend to you, then they may look to enforce their rights against those who infringe the trade mark, such as using the protected wording as an internet domain name.

Holding the rights to a registered trade mark does not automatically entitle the owner to register their name or brand as a limited company name, even if that name or brand is already in use. The UK Intellectual Property Office (“IPO”) has confirmed that a trade mark, which is a word or a term, might not be accepted for registration at Companies House if it is not allowed by the laws that govern acceptable company names. Further guidance in relation to this is available here: https://www.gov.uk/government/publications/incorporation-and-names/incorporation-and-names#choosing_name

What is a trade mark?

Trade mark is defined by the IPO as the ‘sign which can distinguish your goods and services from those of your competitors’ and can be made up of words, logos, or both.

Before applying to register a trade mark, you will need to check that no similar brands have already been registered, find out which of the 45 classes of products and services your proposed mark belongs to and then submit your application with the relevant fee, which starts from £170.

Once the application has been examined, third parties will have a limited time period within which they can make any objections. If no objections are made then the IPO estimates that the whole process, from the beginning to the trade mark becoming registered, will take between four to six months.

Further information in relation to how to register a trade mark in the UK and EU and associated costs is available in one of our other blogs here: https://www.jonathanlea.net/2018/how-to-register-a-trade-mark-in-the-uk-and-the-eu/

Benefits of trade mark protection

The benefits of registering your company name as a trade mark include:

  • The exclusive right to use the trade mark in relation to the goods and/or services in respect of which it is registered for an indefinite period of time; provided renewal dates are met and the trade mark is put to genuine use.
  • Deterring third parties from misrepresenting or copying your brand identity.
  • Easier, quicker and cheaper to enforce trade mark rights against third parties using an identical or confusingly similar trade mark to the registered trade mark.
  • Protects the business’ reputation and reduces the likelihood of your customers associating your business with the inferior goods or services of another business.
  • A registered trade mark is an asset of the business and can increase the value of the business.

 

Choosing your company name

Since 14 January 2019 the use of a trade mark as a company name has been specifically included in the list of infringing acts under section 10(4)(ca) of the Trade Marks Act 1994. Furthermore, companies can no longer rely on the fact that they are using their own name as a defence to trade mark infringement proceedings (whether in accordance with honest practices or not).

These rules apply regardless of when the use of the company name started. Therefore, it is important to review your company name to check there is no conflict. It is important for businesses expanding in the UK to carry out suitable searches and enquiries to ensure that their company name will not infringe the rights of a third party.

In order to avoid trade mark infringement when choosing your company name, it is a good practice to do a thorough and professional search of the following:

  • Company name availability checker at Companies House.
  • Trade marks databases and registries.
  • Domain name registries.
  • Relevant trade journals or magazines.
  • Internet search engines.

Your search should not only look at names that are exactly the same but also at names that are ‘too like’ or ‘same as’ and may cause consumer confusion.

Consideration should also be given to the rules established by Companies House:

  • The company name must include the appropriate ending (for example, Limited, plc.,c.i.c).
  • Comply with certain restrictions, for example, that the proposed company name is not offensive or its use does not constitute a criminal offence.
  • Obtain prior approval of the Secretary of State (or other relevant authorities) to use company names that imply a connection between the company and the government, or there are sensitive words and expressions (for example, ‘British’, ‘society’ and ‘post office’).

Trading name

A business can trade under a different name to its registered name, known as a ‘business name’ or ‘trading name’.

A trading name should not:

  • Be the same as an existing trade mark.
  • Include ‘limited’, ‘Ltd’, ‘limited liability partnership’, ‘LLP’, ‘public limited company’ or ‘plc’.
  • Contain a ‘sensitive’ word or expression, unless you get prior permission referred to above.

The rules surrounding names that are ‘too like’ and ‘same as’ do not apply to business/trading names.

As with company names, you will need to register your trading/business name as a trade mark if you want to stop people from trading under your business name.

How we can help

At the Jonathan Lea Network we can advise on registering a trade mark from beginning to end and what to do in the event that a third party is using your registered trade mark without your permission.

For all new clients, we offer a no-cost and no-obligation call of up to 20 minutes to first discuss your matter and requirements before confirming a scope of work and quote. This can be arranged by sending your details together with an overview of your matter through our contact form.

About Alastair Manning

Alastair is a specialist business law solicitor who has worked at top international City firms, before training with a leading commercial law firm in the South East and then joining The Jonathan Lea Network in 2019.

The Jonathan Lea Network is now a SRA regulated law firm that employs solicitors, trainees and paralegals who work from a modern office in Haywards Heath. This close-knit retained team is enhanced by a trusted network of specialist self-employed solicitors who, where relevant, combine seamlessly with the central team.

If you'd like a competitive quote for any legal work please first send an email to wewillhelp@jonathanlea.net with an introduction and an overview of the issues you’d like to discuss, following which someone will liaise to fix a mutually convenient time for a no cost no obligation initial call with one of our fee earners.