When setting up a business many owners will spend a long time creating a great business name or logo, others will not think twice and end up with a rather generic and unimaginative or descriptive name. If you are the latter read no further, but if you are the former and would like to consider protecting your name or logo then read on.
Companies House and Company Names Tribunal
If you incorporate a company at Companies House you will be limited by what Companies House will accept. There are some words that are deemed “sensitive” and therefore prior require consent. There are also names that are deemed too similar to that of an existing company. This does afford some limited protection in that once incorporated Companies House will not permit someone else to incorporate a company with the same name.
Since 2008 section 69 of the Companies Act 2006 has also given an ability for any person to apply to the Company Names Tribunal to object to a company name on certain grounds:-
– that it is the same as a name associated with the applicant in which he has goodwill; or
– that it is sufficiently similar to such a name that its use within the UK would be likely to mislead by suggesting a connection between the company and the applicant.
For example, in early 2024 one of Richard Branson’s Virgin companies applied to the Company Names Tribunal and successfully objected to a company calling itself Virginbay Limited.
Registered Trademarks
The key method to protect your business name or logo is to register the name or logo at the Trade Mark Registry of the Intellectual Property Office (“IPO”). Once registered you will have the ability to restrict third parties from using the same or confusingly similar names or logos for the same or similar goods or services.
The mark you register can consist of simple words such as “Rolls-Royce”, slogans or tag lines such as Nike’s “Just do it”, designs such as Ferrari’s horse, or domain names such as “amazon.com”.
Trademarks are registered in one or more number of classes. There are 45 classes with each class correlating to particular type of goods or service. For example, clothing is covered by class 25, or legal services is covered by class 45.
A typical application to register a trademark from start to finish, if it goes smoothly, will take just short of 3 months and the IPO’s costs start from just £170.
Once you have registered mark you may use the ® symbol next to your mark which denotes that your mark is registered. Until your mark is registered you can use the ™ symbol which although has no legal implication is a useful warning device to third parties. Your trade mark registration lasts for a period of 10 years after which the IPO requires a renewal fee for every further 10 year periods.
Non-registered Trademarks
All is not lost however if you have not registered your business name or logo with the IPO. In the UK it is also possible to protect your name or logo by relying on the common law tort of “passing off”. Broadly speaking passing off prevents one trader from misrepresenting their goods and services as being someone else’s. Generally, to succeed in a case of passing off you have to show three things:-
1. that you have goodwill or a reputation attached to the goods or services you are supplying;
2. that there has been a misrepresentation by the other party to the public (whether intended or not) which leads to the public believing that the goods or services being provided are your good or services;
3. that you have suffered damage as a result of the misrepresentation.
It is not always easy to show the presence of all of these three elements. Passing off cases are not for the faint hearted, or those with shallow pockets. Like any litigation, passing off cases are likely to be expensive, time consuming and stressful. However, a relatively small amount of time and expense protecting your brand now with the legal protection afforded by a registered trademark could save you a lot in the longer term.
If you would like to discuss this further please do not hesitate to contact James Oxley james.oxley@haroldbenjamin.com
