Trade mark infringement and company names

Publication | May 2016

Following the implementation of the EU trade mark regulation1 (EUTMR) on March 29, 2016, a registered trade mark may now be infringed by use of that trade mark as a trade or company name or as part of a trade or company name2.

Background

A trade mark is a badge of origin and its protection, via registration secures exclusive rights to the use of that name and the ability to prevent others from adopting an identical or confusingly similar name in the same field. In essence, to create, preserve and defend a niche in the marketplace.

In the UK, pursuant to s69 (1) of the Companies Act 2006 it is already feasible to object to a company’s registered name if:

  • it is the same as a name (or trade mark) associated with the complainant and in which he has goodwill or
  • the name 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.

The new infringement created by the EUTMR takes this one step further and bolsters a trade mark (brand) owner’s rights.

Action required

If you do not already, we recommend that you subscribe to a Company Name Watch. It is inexpensive and notifications of new incorporations enables prompt action to be taken under the Companies Act and EUTMR provisions to prevent dilution of brands through the adoption of identical, confusing or misleading names specifically as company names.

This is a logical and useful augmentation to a Trade Mark Watch subscription which provides early warning of identical or similar marks being applied for as trade marks, again facilitating prompt action to be taken, which in turn means formal legal proceedings may be avoided.

Risk

If you invest in protecting your brands, it makes sense to police and defend them in order to maintain their strength and value. Doing nothing risks the scope protection being diluted over time.

Company name and trade mark watching

We will:

  • Carry out a scoping exercise to check the company names and trade marks requiring watching.
  • Provide you with fixed prices for:
    • subscribing to both a Company Name and Trade Mark Watch (the two are less expensive when conducted in tandem)
    • provide you with monthly reports of company names and trade mark applications notified.
  • If follow up action is required, we will provide you with our recommendations and an estimate of likely costs involved. In the case of Company Name Tribunal proceedings, we will usually provide a fixed fee price for the work involved.

Benefits

Subscribing to watches ensures that your brand is comprehensively policed so that your rights can be swiftly and effectively enforced.

Fees

In the UK, the cost of a combined Trade Mark and Company Name Watch starts at around £130 plus VAT. This does not include our fees for reviewing and reporting but we generally set a very low monthly fixed fee, on the basis that we sift the results and flag any results which warrant more detailed assessment.


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