Stopping name filching: recent decisions of Company Names Tribunal

Good name in man and woman, dear my lord,
Is the immediate jewel of their souls.
Who steals my purse steals trash. ‘Tis something, nothing:
‘Twas mine, ’tis his, and has been slave to thousands.
But he that filches from me my good name
Robs me of that which not enriches him
And makes me poor indeed.
 Othello, William Shakespeare, Act 3 Scene 3

Section 69 of the Companies Act 2006 introduced a new legal remedy into English law.  Section 69(1) provides:

(1) A person (“the applicant”) may object to a company’s registered name on the ground—
(a) that it is the same as a name associated with the applicant in which he has goodwill, or
(b) that 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.

An objection is made by application to the company names adjudicator.  Sections 70 to 75 provide a legislative framework for such applications, and are supplemented by the Company Names Adjudicator Rules 2008.

These provisions were brought to IP Draughts’ attention by a tweet on 28 April from the UK Intellectual Property Office (they are busy birds, twittering on a Saturday), which linked to a page of the IPO website containing recent decisions of the Company Names Tribunal.  It is the first time that IP Draughts has seen any decisions under section 69, although the Tribunal has been making decisions for the last couple of years.

Among the decisions recorded on that page are a successful application by BMW and an unsuccessful one by Zurich Insurance.  IP Draughts was interested to read a decision rejecting an application by a firm of solicitors, Miller Rosenfalck LLP, in which they claimed goodwill in the name European Business Lawyers, and adduced as evidence the name of their website: www.europeanbusinesslawyers.com.

Section 69 provides another weapon for someone who thinks their name is being misused, in addition to the existing remedies for infringement of registered trade marks, passing off and remedies for cybersquatting under the dispute resolution procedures of domain name registries – eg see WIPO’s domain name dispute procedures here.

Can J K Rowling claim goodwill in the name Filch?

In some ways, the remedy under sections 69 to 75 is similar to that for cybersquatting: it is relatively low cost (at least if the fee scales, set out in the Rules, are anything to go by – a successful party will be lucky to receive an order for payment of more than a few hundred pounds) and the remedy is an order to change a name.  The ‘flavour’ of the reported decisions is reminiscent of some decisions in domain name disputes.

As far as IP Draughts is aware, the remedy under sections 69 to 75 (and the associated wrongdoing), does not have any official name.  It falls somewhere between infringement and passing off.  IP Draughts would like to suggest that they should be known as actions to prevent filching a company name, so as to distinguish the tort (if it is a tort) from trade mark infringement or passing off.  Please let us know your views on this name by completing the survey, below.

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Filed under General Commercial, Intellectual Property

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