| Company
Names and Trade Marks |
| A director
of any new company needs to know three things |
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True, there is a defence
for "own name" use, and this applies to
company names. But only if the name is "used
in accordance with honest practices in industrial
or commercial matters". What does this mean?
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"The test for honest practices is not subjective,
but objective. If the defendant caused significant deception,
albeit innocently, or it was reasonably foreseeable,
there is no defence. A reasonable defendant can be expected,
prior to commencing use, to have searched the relevant
registers (national and European) of trade marks, and
if alerted to a potentially conflicting mark to have
further made reasonable investigation as to whether
it has been used enough to have acquired a reputation
or goodwill. (Jacob J in Reed Executive Plc v Reed
Business Information Limited March 3, 2004 [2004] ETMR
56) |
| It is imperative
therefore, when a new company is setting up, that a
search is made of not only the company name registers
but also the trade marks registers (there are more than
one for the UK). |
| Note that the trade
mark registers searches must be extensive enough to
find not only the same name but anything similar to
it. This is because the law of trade mark infringement
applies to both. The search provided by the Patent Office
Search and Advisory Service for £80 is not that
extensive. On average, a fully extensive search costs
about £100, and the time taken to have a trade
mark attorney analyse it usually costs another £100-150.
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2.
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| True, there is
a defence for such anterior use. But this applies only
if that use is a) in a "particular locality"
b) so extensive that a passing action could be brought
against the owner of the trade mark registration and
c) the owner of the trade mark registration has no earlier
use himself. |
| It frequently occurs
that companies will leave seeking registration of their
name as a trade mark for a few years after their incorporation,
only to find that in the interim another company has
beaten them to the trade marks register for the same
name. |
| The company without a trade mark
registration is therefore at risk of having its use
restrained by an injunction from the company that does
have the trade mark registration, even if that use is
of the company name and that use began before trade mark registration
was obtained. |
| If a new company
wants to take advantage of the "own name"
defence, it must have a search of the trade mark registers
done. If I a new company wants to stop another company
from obtaining the same name as a trade mark registration,
the company must register its name as a trade mark. |
| The cost of obtaining
trade mark registration is a minimum official fee of
£200 (with no further fees to pay until the first
renewal is due 10 years later). The time taken to prepare
the application for registration and to deal with correspondence
with the Registry can be a minimum of £200. |
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NB the figures above exclude VAT.
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