COCA-COLA Name Wars and the New Company Names Adjudicator

A trade mark is one of the most valuable assets of any business.  It distinguishes the goods and services of one trader from those of another, provides an indication of the origin and quality of goods and services, and is a means by which the goods and services are advertised.

It is crucial, therefore, to have effective measures in place to protect trade marks.

Until recently, you could only object to a new registered company name if it was the same as your name.  Otherwise, you had to fall back on your registered trade mark rights, if you had any, or an action for “passing off”– notoriously difficult and costly to fight. 

Now, anyone with goodwill in a name, or a similar name, can object, including trade mark owners who are sole traders.

The New Procedure

The new procedure provides trade mark owners with an additional line of attack which can be commenced before any trading has taken place, simply on the basis of goodwill in the proposed name or a similar name. 

Goodwill is defined widely to include “reputation of any kind”, the requirements of which appear somewhat lower than those usually required for passing off. 

Section 69 of the Companies Act 2006 came into force on 1st October 2008 and allows objection to a company name if it is:

• the same as a name associated with the Applicant in which they have goodwill, or
• 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.

The objection is lodged with the Company Names Adjudicator (CNA), who will decide on the merits of objection and can direct that the name be changed.  Once an Applicant has objected to a company name, the respondent company has to show that its actions fall into one of the following circumstances, set out in section 69(4) of the 2006 act, which each raise the presumption that the name was adopted legitimately:

• The name was registered before the commencement of the activities on which the Applicant relies to show goodwill.
• The company is operating under the name, or is proposing to do so and has incurred substantial start-up costs in preparation, or was formerly operating under the name and is now dormant.
• The name was registered in the ordinary course of a company formation and the company is available to sell to the Applicant on standard terms and conditions of that business.
• The name was adopted in good faith.
• The interests of the Applicant are not adversely affected to any significant extent.

However, even if the first three points above apply, if the Applicant can show that the name was registered either to obtain money from him or to prevent registering the name, the objection will be upheld by the CNA.

Benefits to Trade Mark Owners

The new provisions are aimed to ensure that disputes over opportunistic company name registrations may be nipped in the bud without the Applicant needing to take expensive legal proceedings. 

Examples of opportunistic company name registrations are 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, or when someone is aware of a merger 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.  Such registrations would be opportunistic because the person registering the company using that specific name is doing so to cash in on the other entity’s goodwill. 

Coca-Cola vs. Coke Cola Limited

The first case heard by the Company Names Tribunal was an application made by Coca-Cola Company Limited, who raised an objection to the registration of Coke Cola Limited, arguing that the company name was taking unfair advantage of Coca-Cola’s well known trade marks. 

The Company Names Adjudicator ordered Coke Cola Limited to change its name on the grounds it is sufficiently similar to that of the Coca-Cola Company Limited to be likely to mislead by suggesting a connection between the two and to pay the sum of £700 to Coca-Cola.  No defence was filed.

If you would like more information, or are aware that a newly incorporated company has registered a name similar to your trade mark, please contact Dennis Lee, IP Partner, on 020 7749 2700 or dktl@silvermansherliker.co.uk.