Can Someone Stop Me From Using My Business Name?

Choosing a business name can feel like a creative act and can be quite daunting, but it also carries legal consequences. Already established businesses or individuals can take various legal avenues to force you to stop operating under a particular name. These include:

• Registered trade mark infringement claims
• The common law tort of passing off
• Action via the Company Names Tribunal (based on both trade mark law and company law)

Registered trade marks

A registered trade mark gives its owner exclusive rights which can be enforced against another company or person who is infringing on those rights. Trade mark rights in the UK are governed by the Trade Marks Act 1994 (“TMA 1994”). Under section 9(1), the proprietor of a registered trade mark has exclusive rights in the trade mark, which are infringed by use of the trade mark in the United Kingdom without consent. The acts constituting infringement are set out in section 10.

The principal grounds for infringement are as follows:

• Identical mark and identical goods or services (section 10(1)): a person infringes if they use in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
• Identical or similar marks and identical or similar goods or services with a likelihood of confusion (section 10(2)): infringement also arises where a sign is identical with or similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, and there exists a likelihood of confusion on the part of the public.
• Marks with reputation (section 10(3)): where a registered trade mark has a reputation in the United Kingdom, infringement arises if a similar or identical sign is used without due cause and such use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. This applies irrespective of whether the goods or services are similar or identical.

Crucially, using a sign as a trade or company name, or part of a trade or company name, is an express act of infringement pursuant to section 10(4)(ca) TMA 1994.

Passing off

An existing business does not have to hold a registered trade mark to prevent you from using a name. It can rely on the common law tort of passing off. This is well-established law that requires a claimant to satisfy a three-part test, which consists of:

• Goodwill: the claimant must demonstrate that it has goodwill associated with the name.
• Misrepresentation: the claimant must demonstrate that the defendant’s use of the name amounts to a misrepresentation (note that this is not the same as confusion).
• Damage: the claimant must show that the defendant’s use of the name causes, or is likely to cause, damage.

Company Names Tribunal

A third party may take action against your business name via the Company Names Tribunal by virtue of sections 69 to 74 of the Companies Act 2006, where a company name is the same as, or sufficiently similar to, a name in which another person has goodwill or reputation. If successful, the Tribunal will order that your company name be changed, or will change it itself if you do not comply with the order.

Practical steps

To avoid the risk of someone enforcing their intellectual property rights against your business name, it is always recommended to conduct due diligence and clearance searches. This could range from high-level searches on the UK Intellectual Property Office (“UKIPO”) trade marks register and Companies House, to a detailed assessment of identical and similar names of other businesses and trade marks.

Conclusion

Someone with a similar or identical name who has prior registered and/or unregistered rights may decide to take action against your business. It is always best to be prepared and well informed before forming a business and investing in marketing, scaling and production.

Our firm has significant expertise in advising clients on enforcing their intellectual property rights as well as preventing such situations from arising. If you need advice before launching your brand, please do not hesitate to reach out to one of our lawyers.