If a company registers an identical or similar company name in the UK with Companies House, submitting a complaint with the Company Names Tribunal (“CNT”) can be an effective way to challenge them. In this article, BrandWrites looks at the defended CNT actions in the first half of 2024 and sets out the key issues, findings, and takeaway points. So far in 2024, only 5% of the 138 actions filed with the CNT have been defended[1].
Our previous articles summarised defended actions in the first half of 2023 and the second half of 2023.
CNT actions
In a related article, we discussed what is required to submit a successful complaint, possible issues that may arise, the expected timescale and some practical tips. To summarise, these are 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 the same of 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 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.3: the name was chosen in good faith;
Defence No.4: the interests of the Applicant are not adversely affected to any significant extent.
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.
Important changes to CNT actions
Since our last CNT action update, important changes came into force on 4 March 2024, which are detailed in our article here. One of the key changes was the repeal of certain defences, such as those which could be invoked where the respondent company had already been trading under the name or was proposing to do so and had incurred substantial start-up costs or was operating under the name but had become dormant. This defence is no longer available to respondents.
Review of recent cases
Case Reference | Summary of key findings and takeaways |
| 23 January 2024 London Projects Ltd v Project London Construction Limited Full decision here | Applicant: London Projects Ltd Respondent: Project London Construction Limited Result: Unsuccessful Conclusion Although the company names were sufficiently similar to be likely to mislead by suggesting a connection, the Respondent successfully relied on a defence. Defences relied on Defence of trading: This defence is no longer available to respondents though. |
| 5 March 2024 Lidl Stiftung & Co. KG v Lidl Logistics Limited Full decision here | Applicant: Lidl Stiftung & Co. KG Respondent: Lidl Logistics Limited Result: Successful Conclusion The company names were sufficiently similar, with LIDL being the distinctive element. The differences in capitalisation between the mark associated with the Applicant (LIDL) and the Respondent (Lidl) would likely go unnoticed by consumers. Defences relied on Defence No.4: the interests of the Applicant are not adversely affected to any significant extent. Unsuccessful as the fact that the Respondent’s owner had no intention of using the name or company was irrelevant; the business could be sold or the Respondent’s owner could change their mind in future. Takeaways Even if the Applicant is a large, well-known company, they must prove goodwill in the full company name. It is sensible to give the evidence some consideration with your legal advisors before taking action before the CNT. |
| 26 March 2024 Buoyant Upholstery Limited v Buoyant Group Limited Full decision here | Applicant: Buoyant Upholstery Limited Respondent: Buoyant Group Limited Result: Unsuccessful Conclusion The company names were sufficiently similar. Both were likely to be referred to as ‘Buoyant’ and customers were likely to perceive the Respondent as the over-arching company of the Applicant. However, the Respondent successfully relied on Defence No. 3. Defences relied on Defence No. 3: the name was chosen in good faith Successful as Respondent was able to provide a range of evidence proving there was no opportunistic intention Defence No. 4: the interests of the Applicant are not adversely affected to any significant extent Unsuccessful as the fact only a small proportion of the Respondent’s sales overlapped with the goods offered by the Applicant was subject to change in the future Takeaway It is not the CNT’s role to deal with cases where someone simply considers another company name is too similar to their own. There must also be opportunism behind the registration. |
| 26 March 2024 Hebridean Spa Ltd v Hebridean Spa Holidays Ltd Full decision here | Applicant: Hebridean Spa Ltd Respondent: Hebridean Spa Holidays Ltd Result: Unsuccessful Conclusion Despite goodwill mainly attaching to the Applicant’s brand name rather than company name, for purposes of CNTs, goodwill means ‘reputation of any description’. Given the presence of the company name on the brand’s products for over a decade, sufficient goodwill existed. However, the Respondent made out a number of defences. Defences relied on Defence of trading: This defence is no longer available to respondents. Defence No. 3: the name was chosen in good faith Successful as Respondent had not acted in an opportunistic way Defence No. 4: the interests of the Applicant are not adversely affected to any significant extent Successful due to differences in the Applicant’s brand name and company name and the differences in customer base of the two parties Takeaway Goodwill means ‘reputation of any description’, therefore goodwill in a brand name can attach to the company name, if the company name has been used sufficiently in connection with the brand name. |
| 10 April 2024 Afro Classics Register v Afro Classics Register CIC Full decision here | Applicant: Afro Classics Register Respondent: Afro Classics Register CIC Conclusion The Respondent changed its name during the course of proceedings. The Applicant’s request for a decision nonetheless to clarify the use of the company name in future was rejected. The CNT awarded more generous costs to the Applicant in light of the Respondent’s behaviour. |
| 13 April 2024 Staffline Recruitment Limited T/A Omega v Omega Solutions Recruitment Limited | Applicant: Staffline Recruitment Limited T/A Omega Respondent: Omega Solutions Recruitment Limited Conclusion Individuals who are joined as co-respondents to CNT actions are jointly and severally liable for costs awards. Where a respondent claims to have not received notice of a CNT action, the applicant is entitled to a contribution towards its costs if it has taken reasonable steps to ensure delivery for example, by sending via recorded post. |
[1] This data is based on the number of defended and undefended decisions and orders published on the CNT’s website (https://www.gov.uk/government/organisations/company-names-tribunal) and is accurate as of 24 June 2024 when the article was finalised for publishing
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