Back in 1999 the Court of Appeal (in the ‘One in a Million’ case) recognised the threat posed by ‘cyber squatters’ registering domain names with the sole intention of exhorting others to pay an inflated price to acquire them.
The domain name registries quickly developed their own dispute resolution procedures to address this problem, the use of which is now established and widespread. Less well used, however, is the Company Names Tribunal (CNT).
The CNT was unveiled on 1 October 2008 to deal with opportunistic company name registrations, in essence those situations where the dominant purpose of registering the company name was to extract money from a third party, or to prevent someone with a better right to the name from registering it. Importantly, the applicant does not have to have a registered company name before making the application. However, the applicant will need to demonstrate that, in the absence of registration, there was goodwill/reputation in the name at the time that it was registered by the respondent.
Much like the dispute resolution procedure operated by the domain name registries, the reference to the CNT is intended to be straightforward and inexpensive. Application is made on a standard form, accompanied by a fee (which is currently £400). The form is sent to the respondent (the registered holder of the name) who has the opportunity to file a response (again, on a standard form, and again accompanied by a fee, currently £150). If the respondent fails to respond, then the Tribunal will order the respondent to change the name of the company to a name which does not offend. If a response is filed, a timetable will be set for evidence to be filed. Once evidence has been filed, a decision can be made with or without a hearing, and in most cases it will be for the parties to determine whether they wish a hearing to take place. The CNT has the ability to make an award of costs, and the court (in this case the High Court) has a limited appellate function.
If the respondent can show that it registered the name with a bona fide purpose in mind then the application is likely to fail, but if the applicant can prove that the respondent’s dominant purpose in registering their name was to obtain consideration from the applicant, or to prevent the applicant from registering the name, then the application is likely to succeed.
In the event that it becomes apparent that an identical or similar name to your own has been registered by a third party, then this offers a straightforward and reasonably cheap method of protecting your name (including unregistered names where goodwill/reputation have been acquired). Having regard to the threat posed by a company name being used by a fraudster, you should not hesitate to protect your name through the CNT if necessary. Any delay in doing so may reduce the prospect of you being able to take steps in the future, and if you fail to take steps to address such an issue when you first become aware of it may put at risk any insurance that you have in place to cover such problems.
The content of this article is for general information only. For further information regarding company name protection, please contact Matthew Atkins or a member of Birketts' Commercial Litigation Team.
This article is from the January 2018 issue of Upload, our monthly newsletter for professionals with an interest in technology. To download the latest issue, please visit the newsletter section of our website. Law covered as at January 2018.
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