New Company Name
Challenge Procedure Tested

The first actions under the new UK company name challenge procedure have at last been decided.

Three decisions have been handed down so far, in actions brought by The Coca-Cola Company and Zurich Insurance Company. In each case, the complainant secured an order that the respondent’s name be changed.

The system has not yet been fully tested, as in each case the respondent failed to respond to the action within the one-month term allowed and the hearing officer treated it as not contesting the application. Nonetheless, decisions followed swiftly and set a term of one month for the change to be recorded.

The procedure is based on Sections 69 – 74 of the Companies Act 2006, under which brand owners may object to the registration of company names that are identical or misleadingly similar to trade marks in which they have prior goodwill, whether or not the brand is a registered mark. An action may be brought not only against companies registered since implementation of the Act on 1 October 2008, but also against names registered before the Act came into force.

The claims are resolved by UK-IPO hearing officers acting as Companies House-appointed adjudicators.

The procedure may not be appropriate where urgent action is needed to stop use that is causing or threatening actual damage. However, it offers cost-effective relief to brand owners whose goodwill may be misappropriated by company names that are not yet in use but which come too close to established brands.

Given that all the actions so far have been undefended, it is hard to tell at this stage how involved the procedure will be in cases that are contested. However, the pattern so far suggests that an appreciable number of respondents will default, and as brand owners become more comfortable with the procedure its use is likely to increase.