Is Use of my Registered Company Name a Defence to Trade Mark Infringement?
Clients often tell us that they have registered their company name at Companies House, so they must be free to use it without objection from third parties.
Unfortunately, this is a misconception, which is sometimes corrected only when the client is faced with a “take down” notice or trade mark infringement claim.
So why is this?
To explain, we first need to distinguish between the following:
Company name registration:
This is the name registered at Companies House, which identifies the legal entity. It is this name that appears on contracts and agreements, as the contracting party.
Under Companies House rules, you can’t register a company with the same (meaning, virtually identical) name as another registered company name. Therefore, quite similar company names can coexist on the Companies House Register. For example, Big Company Ltd and The Very Big Company Ltd, Orange Limited and Orange Development Ltd.
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Trading / business names:
This is the name that a business trades under – it is usually visible to customers, clients and the trade. It will often be used on your company website, headed notepaper and as your domain name. For instance, Jonathan Lea Network, Lisa Patten Consulting and PWC for PriceWaterhouseCoopers International Limited, Facebook.
It can be the same, a shortened version of or a totally different name from your registered company name. You can choose.
Trade marks:
These signs include the names of products and services, trading or business names, words, slogans, phrases, symbols, images, logos, even the shape of the product or its packaging, colours, sounds or smells. They can also be a combination of these elements.
Famous examples of trade marks include Google, British Airways, Apple, Coca-Cola, Nike.
However, to be legally considered as a trade mark, the sign must be capable of distinguishing the goods and / or services of one trader from those of another. Therefore, it must be either actually used in trade or business as an identifier of the origin of the relevant goods / services or capable of being used as such. Simple registration at Companies House may not necessarily be sufficient, e.g. Window Cleaning Ltd for window cleaning services.
Registered trade mark:
Trade marks can be protected further by registering the mark at the various trade mark registries in each jurisdiction.
Such registered rights give the owner the exclusive right to use the relevant trade mark indefinitely in relation to the goods and services for which it is registered provided renewal fees are paid and the mark is used.
The owner can also take legal action to stop the use and subsequent registration of any identical or similar mark being used or registered in relation to identical or similar goods or services, where there is a likelihood of confusion arising from such similarities. In certain circumstances, use of the mark for goods and services which are dissimilar to those for which the mark is registered can be prevented too.
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Adopting a new trading name or other trade mark
As discussed, registered trade mark rights extend much further than simply the right to object to the use of an identical name or sign. Ownership gives you, the owner, the ability to stop others using your mark or name and similar ones as well.
However, ownership by others means that you can be prevented (by earlier right holders) from using your new chosen name or mark, including even your registered company name.
So, prior to the adoption and use of a new trading name, style or other trade mark, it is vital that you ask your legal adviser to conduct a trade mark clearance search (sometimes called an availability search) to determine whether or not you can both use and register your chosen name or other trade mark in the territories where you intend to trade under it.
Since not all trade marks are registered, it is also important to be aware of the trade marks in use in your business sector, including marks similar to your proposed mark. Owners of such unregistered trade marks can object to the use of their marks or similar ones through a legal action called passing off.
In conjunction with your legal adviser, you should conduct your own due diligence and market searches for identical or similar marks, including:
- Internet search engine searches, e.g. via Google
- Trade press, journals, magazines, media
- Checks of the relevant trade outlets (whether manufacturers, wholesalers or retailers
- Dictionary, telephone and trade directories
- Social media handles, user names, internet and domain name searches
- Companies House Register (see Companies House availability checker)
Registration
Once your advisers have “cleared” your chosen mark, it is important to apply to register it as soon as possible and ideally before you begin use. This will enable you to block (by opposition) any later applications for identical or similar marks and not be prevented from using the mark yourself should anyone pre-empt your application in the meantime. Do not delay!
Once you have completed registration, you should use your mark (in the form registered) in relation to the goods and services for which it is registered, otherwise you could potentially face cancellation for non-use.
This registered protection lasts forever, unlike other IPRs, provided renewal fees are paid every ten years in the UK. Renewal time frames vary from country to country so it is important to take local advice in both this regard and in relation to filing for registration.
Protecting your trading name and other trade marks by registration will enhance the value of your business in the eyes of investors, to enable you to defend and protect one of your most valuable assets: the goodwill and reputation attaching to that name or mark.
How we can help
At the Jonathan Lea Network, we can:
- Conduct trade mark clearance searches
- File trade mark applications to register a brand name, trading name, logo or other trade mark and manage the process through to registration (in the UK and overseas)
- Assist in opposing registration of someone else’s conflicting mark or defending you against such threatened opposition
- Assist in post-registration matters, for instance, non-use cancellation, consents, limitation of the specification of goods and services
- Take action to prevent the use of your trade mark or similar mark by third parties
- Defend you if you are accused of using someone else’s trade mark
- Advise you in choosing an appropriate trade mark – some trade marks are legally stronger than others
- Assist in the exploitation of your trade mark, for instance, licensing, sale, mortgaging, franchising, etc.
- Assist with the renewal of your trade marks
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.
This article is intended for general information only, applies to the law at the time of publication, is not specific to the facts of your case and is not intended to be a replacement for legal advice. It is recommended that specific professional advice is sought before relying on any of the information given. © Jonathan Lea Limited.
