New Company Name Procedure

Company Name Registration – A new weapon against the opportunist In Brief: From 1 October 2008, a new procedure for objecting to the “opportunistic” registration of a company name at Companies House was introduced. Previously, only the Secretary of State could direct a company to change its name because it was “too like” another. This new route of attack is a welcome addition to a brand owner’s armoury. Comment: The new procedure is designed to prevent “opportunistic” company name registrations, not coincidental ones that concern brand owners. In order to object against these, brand owners will still have to rely on registered and/or unregistered Trade Mark rights under the laws of Trade Mark Infringement and Passing Off respectively. Albright Patents strongly urge that Trade Marks are protected via Trade Mark Registration at the outset and that company name watches are put in place to monitor the incorporation of company names. Prompt robust action is essential to protect your Trade Mark or brand name and deter others from straying onto your market place and “freeriding” on the back of your good name. The Law: Section 69 of the Companies Act 2006, permits any person or company (the applicant) to object to a company’s registered name on the grounds that: • • It is the same as a name associated with the applicant in which he has goodwill; or It is sufficiently similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the applicant. Certain defences are available to the respondent, for example, that the name was registered before the commencement of the activities on which the applicant relies to show goodwill or that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business. However, the respondent will not be able to take advantage of a defence if the applicant shows that the main purpose of the respondent’s company name registration was to obtain money (or other consideration) from the applicant or prevent him from registering the name. Procedure: An objection should be made to the Company Names Adjudicator, who will, if upheld, direct that the name be changed. For more information or assistance with your Patent, Trade Mark or Design requirements, please do contact us.

Register your Trade Mark at the start or face having to rename your business �gI set up my new business 6 months ago and things had been going well. Whilst I hadn�ft yet taken a salary, I hoped to do so next month and was looking forward to treating my family to dinner! Then, out of the blue, I received a very stern letter from a firm of Trade Mark Attorneys threatening to issue proceedings for Trade Mark Infringement and Passing Off against me and demanding that I pay an award of costs. Apparently I had been using their client�fs registered Trade Mark in relation to similar goods and services to those covered by their registration. To make matters worse, my Google Adwords campaign was immediately stopped in its tracks by Google and my Ebay adverts were also taken down by the other side. At the same time, I noticed that one of my main competitors, a few streets away, had hyphenated my domain name, registered it, and was directing traffic to their website. My business was suddenly looking very uncertain and I was facing financial ruin.�h Don�ft hide behind the common misconception that �gthis won�ft happen to me�h because believe me, it does. I am an Attorney that acts for clients on both sides of the fence -- the Claimant enforcing registered rights and the unwary Defendant trying to salvage their business in the face of an infringement attack. Time after time, I hear myself saying �gif only you had registered your Trade Mark at the outset, the situation could have been so different and very much less costly�h. Build your business with brick not straw because there could be wolf at the door It is a brave (or foolhardy) person that buys a house without a survey, be it a basic homebuyer or a full structural survey. So why do people think that they can create or buy a brand and not conduct some basic due diligence to check for prior conflicting Trade Mark Applications/Registrations. After all, a Trade Mark is also property and an asset. In order to register a Trade Mark, it must be distinctive, that is, not descriptive of the goods/services in respect of which protection is sought and it must not conflict (i.e. be identical or confusingly similar) with earlier third party rights. In order to protect your innovation and investment, Trade Mark searches should be conducted and registration applied for before a brand or marketing campaign is launched. As an illustration, in the USA, in 2007, Cisco Systems sued Apple Inc. for Trade Mark Infringement over the naming of their �giPhone�h iPod-phone based upon Cisco�fs US Trade Mark Registration iPhone. The launch of the Apple iPhone was delayed until agreement was reached. However, please bear in mind that in some cases, no amicable agreement is reached, and infringing Trade Mark use is prevented and damages are awarded. Three Hot tips 1. If the domain name is already registered, alarm bells should ring because there might also be a Trade Mark registration. This must be checked immediately. 2. The fact that you have registered your company name at Companies House does not provide you with enforceable rights or protect against Trade Mark Infringement. 3. Choose a distinctive invented Trade Mark. It is much more likely to be free for use and registration and will serve to distinguish your goods/services from those of your competitors. It is imperative to create a strong brand identity that will stick in the consumer�fs mind. Searching You can do a Trade Mark search for free, yes for free, on the UK Intellectual Property Office�fs (UKIPO) website at www.ipo.gov.uk. If you type in the proposed brand name, it is possible to see if the identical Trade Mark is registered in the UK and if so, for what goods and services. If you find that the Mark is already registered for identical or similar goods/services to those of commercial interest to you, you may be well advised to select an alternative Trade Mark at an early stage. If no identical Trade Marks are located, a more detailed full UK Trade Mark Clearance search should be conducted to investigate similar Trade Marks that could prevent use/registration of your Mark in the UK. Registration Once you have established that a Trade Mark is free for use, a Trade Mark application should be filed as quickly as possible. In doing so, it is critical that the Mark is represented in the appropriate way and that the specification of goods/services is drafted adequately. The cost of using a qualified Trade Mark Attorney for this work is less than you would think and is money well spent. If you have taken the steps of identifying a mark and searching it, it is essential that you protect it in the right way to ensure that your future business is safe-guarded. Albright Patents or another attorney firm will be able to guide you through the searching and registration of your Trade Marks in the UK, EU and beyond. Robert Games is the senior and founding Attorney of Albright Patents, a Patent and Trade Mark Attorney firm based in Eagle Tower, Cheltenham. Robert worked as a Patent Examiner at the UK Intellectual Property Office, before becoming a European patent attorney, chartered British patent attorney, and trademark attorney. Robert has worked in two of the UK�fs leading private practices. Albright Patents seeks to deliver cost effective and understandable advice and to protect your innovation (Patents, Trade Marks and Designs) robustly. Albright Patents offers a free initial consultation and are happy to discuss your requirements on the telephone, by email or in person at their offices. www.albrightpatents.co.uk (c) Robert Games 2008