If a company registers an identical or similar company name in the UK with Companies House, then submitting a complaint with the Company Names Tribunal (“CNT”) can be an effective way to stop them. In a related article, we discussed what you would need to submit a successful complaint, the possible issues that may arise, the expected timescale and some practical tips.
At the date of writing this article, 150 actions filed with the CNT have gone undefended while 8 have been defended so far in 2023[1]. In this article, BrandWrites looks at the defended CNT actions to date and sets out the key issues, findings, and takeaway points.
Before diving into the review of cases, we briefly summarise the elements required to succeed in an action against a company name:
You must have goodwill/reputation in the name you are relying on;
The company names must be sufficiently similar; and
The respondent to the action must not have any defences available to them.
The possible defences available are:
Defence No.1: the name was registered before the start of the activities that you are relying on to show you have goodwill/reputation in the name;
Defence No.2: the company is already trading under the name or is proposing to do so and has incurred substantial start-up costs or was operating under the name but is now dormant;
Defence No.3: 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;
Defence No.4: the name was chosen in good faith; or
Defence No.5: the interests of the applicant are not adversely affected to any significant extent.
It is worth noting that a company cannot successfully rely on any of the above defences if the complainant (also referred to as the Applicant) can show that the main purpose of registering the company name was to obtain money (or other consideration) from them or to prevent them from registering the name.
Review of cases
Case Reference
Summary of key findings and takeaways
21 July 2023
Botanica Agriculture and Extraction Ltd v Botanica Ltd
Applicant: Botanica Agriculture and Extraction Ltd Respondent:Botanica Ltd Result: Unsuccessful
Conclusion: – The Applicant did not submit sufficient evidence to show goodwill/reputation in the names relied upon. – The Respondent was awarded costs.
Takeaways: – The Applicant submitted one example of use and the CNT held that it fell a long way short of meeting the relatively low hurdle necessary for the Applicant to establish that it had goodwill/reputation in the name “Botanica” solus or any of the other names being relied on. – Be prepared to submit enough evidence to show the requisite goodwill/reputation in any name you plan to rely on.
26 June 2023
ReSolve Capital Partners Limited, Resolve Capital 5 Limited and ReSolve Capital LLC v Resolve Capital Group Limited Full decision here
Applicant: ReSolve Capital Partners Limited, Resolve Capital 5 Limited and ReSolve Capital LLC Respondent: Resolve Capital Group Limited Result: Unsuccessful
Conclusion: – Through evidence, the Applicant showed that they have goodwill in the names ReSolve and Re|Solve Capital Partners. – The names were found to be sufficiently similar for the Respondent’s name to likely mislead. The CNT found that the fact that Re|Solve Capital Partners involves a more obvious separation between Re and Solve does not prevent the word from being understood as a form of “Resolve”. – The Respondent successfully relied upon defence no.2. – A reduced award for costs was ordered because the Respondent did not file all their evidence at the appropriate time.
Defences relied on: Defence no.2: the company is already trading under the name. – Successful because sufficient evidence was submitted to show that the company was already trading under the name. – The Respondent argued that they incurred substantial costs – however the only evidence submitted was an invoice for a domain name registration that cost £17.99. The CNT did not consider this to be substantial.
Defence no.4: the name was adopted in good faith. – Successful because sufficient evidence was submitted to explain why the company name was chosen.
Defence no.5: the interests of the applicant are not adversely affected to any significant extent. – As the two defences relied upon above were successful, the CNT did not find it necessary to consider this defence.
Takeaways: – The evidence submitted in relation to defence no.2 was weak, however the CNT held that the evidence required to rely on this defence is not a high hurdle.
Applicant: Spendor Audio Systems Limited Respondent: Spendor Ltd Result:Successful
Conclusion: – Through evidence, the Applicant showed that they have goodwill in SPENDOR. – The names were found to be sufficiently similar. – The Respondent failed to successfully rely on any defences. – Spendor Ltd was forced to change its company name and an award of costs was found in favour of the Applicant.
Defences relied on: Defence no.2: the business is already operating under the name; – Unsuccessful because they filed no evidence in support.
Defence no.4: the name was adopted in good faith; – Unsuccessful because they filed no evidence in support.
Defence no.5: the interests of the applicant are not adversely affected to any significant extent – The Respondent argued that it is not in the same line of business as the Applicant, that the parties are serving unrelated markets. – The CNT rejected this argument on the basis that the sector/business area the Respondent has chosen to trade in so far, or for which it is registered with Companies House could change or grow over time and cause confusion with the Respondent which could lead to loss of trade or damage to the Applicant’s reputation. – As this would adversely affect the interests of the Applicant to a significant extent, this defence could not be relied on.
Takeaways: – Evidence must be submitted to support defence nos. 2 and 4. – Operating in a different line of business was not relevant for defence no. 5.
Conclusion: – The Applicant has goodwill and reputation in INTEL. – The names are sufficiently similar to suggest a connection between the companies. – The Respondent successfully relied on defence no.4, that the name was adopted in good faith. – The action failed and the Respondent was awarded costs.
Defences relied on: Defence no.2: the business is already operating under the name. – Unsuccessful because the evidence submitted showed the intention to set up a company but not actual operation at the relevant date.
Defence no.4: the name was adopted in good faith. – Successful, there was found to be a good and credible explanation for choosing the name.
Defence no.5: the interests of the applicant are not adversely affected to any significant extent. – Successful due to the difference between the names, the aptness of the contested name to describe the business in which the primary Respondent now operates, and the absence of evidence that the Applicant’s name had a reputation for AI at the date on which the action was filed.
Applicant: Movega Removals Limited Respondent: Movega Result: No substantive decision
Conclusion – The Applicant filed an action with the CNT even though the Respondent had changed its name from MOVEGA REMOVALS LIMITED to NEVENA DANIELOVA ZHELEVA LIMITED. – The Applicant requested a hearing to discuss the matter, because they wanted to recover costs for bringing the action. – The CNT found that since the offending name had been changed, the proceedings had clearly become without purpose and the Applicant’s primary request not to close the case was refused. – As to the issue of costs, and despite considering that the Applicant did not warn the Respondent before starting the action (i.e. to give them the chance to change the name before commencing CNT proceedings), the CNT stood by their earlier decision to award the Applicant a cost award of £1,450. The actions following the change of company name, including the hearing, did not change that.
3 March 2023
Access Logistics Limited v Access Logistics (UK) Limited
Conclusion – Through evidence, the Applicant showed that it has goodwill in ACCESS LOGISTICS. – The company names are identical. – The Respondent successfully relied on defence no.2, that the company is already trading under the name. – The Respondent was awarded costs.
Defences relied on Defence no.2: that the company is already trading under the name. – Although the Respondent did not submit evidence, the CNT treated its counter statement as evidence and found that there was sufficient evidence to show that the Respondent was already trading under the name.
Given that defence no.2 was successful, the CNT did not find it necessary to consider defence nos.4 and 5 which were also relied on.
Takeaway: – When no evidence is filed, the counterstatement filed may be treated as evidence. – Although evidence was presented that there were instances of actual confusion between the companies, the CNT reiterates that the main purpose of the legislation contained in the Companies Act 2006 is to prevent the opportunistic registration of company names, not a likelihood of confusion between companies’ names.
15 February 2023
Brian Hamill and Perfect Memorabilia Limited v Signed Security Limited
Applicant: Brian Hamill and Perfect Memorabilia Limited Respondent: Signed Security Limited Result: Unsuccessful
Conclusion: – The Applicant did not submit sufficient evidence to show goodwill/reputation in the name relied on. – As no goodwill was established, there was no need to consider whether the names were similar. – The Respondent was awarded costs.
Conclusion: – The evidence submitted by the Applicant was ambiguous and was not sufficient to show goodwill/reputation. – Therefore, the action failed. However, the CNT proceeded to consider the remaining elements required, in case the decision was appealed. – The CNT held that the names would have been sufficiently similar. However, based on the evidence presented, the Respondent would have been able to successfully rely on defence no.4, that the name was chosen in good faith. – The Respondent was awarded costs.
Final comments
As you can see, only a limited number of CNT decisions were issued in the first half of 2023 as most actions filed with the CNT go undefended.
The decisions discussed above demonstrate that:
If you challenge a company name, it is important that you can provide sufficient evidence to show goodwill/reputation in the name you are claiming the company name is similar/identical to. 3 of action discussed above failed because the Applicant either did not submit evidence or could not prove goodwill/reputation in the name they were relying on.
if your company name is challenged and the Applicant has the necessary goodwill/reputation, and the names are found to be similar then there are a number of defences that you could rely on and choosing the most appropriate one and presenting sufficient evidence will be essential to successfully defend the action.
Access Logistics Limited v Access Logistics (UK) Limited discussed above is also a reminder that a CNT action may not always be the most appropriate forum for a dispute, especially when the other side is already trading under the name. It is recommended that you obtain professional advice before starting a CNT action, as it may be that a trade mark infringement and/or passing off action would be more appropriate.
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