The New Company Names Tribunal
This notice is to advise you of a new tribunal that is based in the UK Intellectual Property Office: The Company Names Tribunal. The powers of this tribunal will come into force on 1 October 2008.
Information about the remit of The Company Names Tribunal, the relevant legislation, statutory forms and fees is set out below:
Adjudicating on opportunistic company name registrations
Company names adjudicators will deal only with disputes about opportunistic company name registrations; that is, solely with applications (complaints) made under sections 69(1)(a) and (b) of the Companies Act 2006. These sections provide for complaints by businesses or persons who have a goodwill or reputation associated with a name and where that name (or a similar name likely to suggest a connection with the complainant) has been opportunistically registered as a company name by someone else with a view to obtaining money from the complainant, or to prevent the complainant from registering the name.
Company names adjudicators cannot deal with cases where someone feels that another company name registration is too similar to, or ‘too like’, their own company name but where there is no suspected opportunism behind the registration. These sorts of disputes or complaints are dealt with by Companies House.
No applications can be made before 1 October 2008. Any applications made prior to this date will be returned to the applicant.
This Tribunal only deals with a very limited set of circumstances. Please read this fact sheet carefully. If you apply to the Tribunal in error you will not receive a refund.
What is the Tribunal for?
Company names adjudicators make decisions in disputes about opportunistic company name registrations. The Tribunal deals solely with applications (complaints) made under sections 69(1)(a) and (b) of the Companies Act 2006.
What is an opportunistic company name registration?
Opportunistic company name registrations share similar characteristics to opportunistic Internet domain name registrations (called cyber squatting). An example of an opportunistic company name registration is when someone registers one or more variations of the name of a well-known company in order to get the latter company to buy the registration(s). Another example might be where someone knows that a merger is about to take place between two companies and so registers one or more variations of the name that the newly formed commercial entity is likely to require. The registration(s) would be opportunistic in that the registration holder’s purpose in obtaining the registration was to cash in on the other entity’s fame.
Can I use the Tribunal to complain about company names too close to my own, even if they are not opportunistic?
No. Company names adjudicators cannot deal with cases where someone feels that another company name registration is too similar to, or ‘too like’, their own company name, but where there is no suspected opportunism behind the registration. These sorts of disputes or complaints are dealt with by Companies House; alternatively, if the company name is used as a trading name it may be actionable under the law of passing off (dealt with by the courts). An application which is made because the applicant is aggrieved that someone has a company name which is too similar is unlikely to succeed unless it can be shown that the purpose of registering the company name was to extract money from the applicant or to prevent the applicant from registering the name. An application to the Company Names Tribunal will fail if the registration holder shows that it registered the name with another purpose in mind. The Companies Act 2006 therefore lists the following defences
a) that the name was registered before the start of the activities on which the applicant relies to show it has goodwill/reputation; or
b) that the company is operating under the name or is planning to do so and has incurred substantial start-up costs, or was operating under the name but is now dormant; or
c) that the name was registered in the ordinary course of a company formation business and the company name is available for sale to the applicant on the standard terms of that business (an ‘off the shelf company’); or
d) that the name was adopted in good faith; or
e) that the interests of the applicant are not adversely affected to any significant extent.
It is very important to note that an application to the Company Names Tribunal will only succeed if the registration holder cannot show any of the above; or, even if the registration holder can show that it satisfies the criteria listed in a), b) and/or c) that the applicant can prove that the registration holder’s main purpose in registering the company name was to obtain money (or some other consideration) from the applicant or to prevent the applicant from registering the name.
An application to the Company Names Tribunal must fall within the bounds of section 69 of the Companies Act 2006 . If you make an application to the Tribunal which is outside its remit, you will not receive a refund.
Do I have to own a registered company name to use the Tribunal?
No. The person making the application (the complaint) to the Tribunal – the applicant – does not necessarily have to have a registered company name before making the application. However, the applicant will have to demonstrate goodwill/reputation in the name at the time that it was adopted by the registration holder as the company name.
Who will decide the case?
A company names adjudicator will decide the case. The adjudicators are hearing officers who are experienced in trade mark and trade name tribunal work. They are based at the UK Intellectual Property Office in Newport, South Wales.
Should I try mediation/ Alternative Dispute Resolution before I apply?
In many cases, it is better for parties to negotiate a solution before taking legal action. Using an Alternative Dispute Resolution (ADR), such as mediation, can often be cheaper and quicker and the results of a decision can be beneficial to all parties. If both parties agree to mediation, the mediator will meet each side separately and together to discuss the issues involved. The mediator will act as a facilitator to try to settle the dispute but will not make a decision. The outcome is not binding and parties can continue with legal action if mediation fails. The UK-IPO has a mediation service, providing both mediators and the premises for mediation, and also maintains a list of other mediation providers.
How do I apply?
You can apply to the Tribunal on Form CNA 1 (145Kb) from 1 October 2008. You can download the form from the UK-IPO website. You will need to give your own details and the details of the company name to which you object, together with a concise explanation (the statement of grounds) as to why you are making the application. You will need to enter a UK address to which the Tribunal can send correspondence and you will need to include the application fee with the form and fee sheet (57Kb).
How do I defend?
If you receive a notice that someone has applied to have your company name registration changed, you must send in Form CNA 2 (166Kb) a counterstatement and the appropriate fee (and fee sheet (57Kb)) by the date specified in the notice; otherwise the adjudicator will order you to change your company name registration to something which does not offend. If you fail to change the name by the date specified, the adjudicator may determine a new name.
How much does it cost?
The fees for the Tribunal are currently as follows:
|Extension of time request||£100|
|Request for security for costs||£150|
In addition to these fees, there are the expenses incurred by the parties, for example, employing legal advisors. If the applicant wins the case, the adjudicator will order the registration holder to pay a contribution towards the applicant’s costs, including the official fees. If the applicant loses the case, or decides not to proceed with it, after having started it, the applicant will usually have to pay costs to the registration holder. see Practice Notice (01/08) for further information.
What happens next?
After the application form has been accepted it will be sent to the registration holder. If the registration holder does not defend its company name registration within the time allowed, the adjudicator will order it to change its company name registration to something which does not offend. If the registration holder does defend its registration, the Tribunal will set timescales for each side to file evidence to support its case. If the applicant does not file any evidence to support its case, the adjudicator may dismiss the application. If the applicant files evidence demonstrating that it owned a goodwill or reputation under the name at the time the company name was registered (or the registration holder admits as much) and the registration holder fails to file any evidence in defence of its registration of the company name, the adjudicator will order a change of name, as described above.
Where the application is defended and both parties file evidence, the adjudicator will make a decision, either with or without a hearing. A hearing can be held either in Newport, South Wales (at the UK-IPO), or at the UK-IPO’s offices in London. After the hearing the adjudicator will issue a written decision which will explain why the company name must be changed, or why no such order is appropriate.
All documents submitted to the adjudicator are open to public inspection, unless the adjudicator directs otherwise.
What happens if the company registration holder fails to change the name when ordered to do so?
If the registration holder fails to change the name by the date specified, the adjudicator may determine a new name for the company and order the Registrar to Companies to make the change without the holder’s consent.
Is it possible to appeal against the Adjudicator’s decision?
If you disagree with the decision made by the adjudicator, you can appeal to the High Court.
How long does it take?
At this stage, it is difficult to predict how long a case will take. Much depends upon the parties themselves, for example, whether an application is defended, whether the parties adhere to the timescales set by the adjudicator or whether they ask for more time to file evidence and whether the parties appeal the adjudicator’s decision to the court.
Where can I get more information?
If you are a party involved in a dispute before the Tribunal, you will be able to contact a designated case work examiner, responsible for the management of your case. Their details appear on all correspondence from the Tribunal. Examiners must remain impartial at all times because they are administering a tribunal. This means that the advice they can give is limited to information about the procedure, such as the dates by which actions must be taken, the format of documents and evidence, and the next steps in the proceedings. They cannot give advice on whether you should apply or defend, or on the content of your explanations or evidence; it is for parties themselves to decide how they wish to present their case. You may wish to consult a legal advisor such as a solicitor or trade mark and patent attorneys; if you wish to appoint a legal advisor after proceedings have started, or you need to change address details, you will need to file Form CNA 7 (87Kb).
The Companies Act 2006 and the Company Names Adjudicator Rules 2008 provide the legal framework within which the Tribunal operates. The Rules deal with procedural matters, such as the sequence of events in a case and the consequences of certain actions (or absence of action) e.g. non-filing of evidence and extension of time requests.
A full list of Tribunal forms is available, as well as the Company Names Tribunal Practice Notices.