Drinks giant Coca-Cola argued that the company name Coke Cola Limited is misleading and opportunistic, taking advantage of Coca-Cola's famous trade marks. Its application was unopposed and a ruling was issued this week by Company Names Adjudicator Judi Pike.
Coke Cola Limited has been ordered to change its name within one month. If it fails to do so, Pike will choose a new company name on its behalf. Coke Cola has also been ordered to make a payment to Coca-Cola. It must pay £400 to cover Coca Cola's application fee and £300 as a contribution towards its cost of stating the case.
The ruling is the first from a Company Names Adjudicator, a role established under powers contained in the Companies Act 2006 that came into force on 1st October.
Under the Act anybody can file an objection with the Company Names Adjudicator if the new company is incorporated under a name that is the same as that associated with the complainant and in which the complainant has goodwill in a business associated with the name or that the new company name is sufficiently similar to such a name and that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the complainant.
Previously a trade mark owner had limited powers to prevent the registration of a company name similar to its own. Laws prevented the incorporation of a company whose name was identical to the name of a company already incorporated under the Act. There was a right to object to a name as being 'too like' the name of a company already incorporated but that right was a limited one.
Rebecca Tilbury, a a trade mark specialist with Pinsent Masons, the law firm behind OUT-LAW, said that in the past, brand owners had a recurring problem in challenging company name registrations.
"If they were not actually being used, conventional forms of trade mark infringement and passing off actions were not available to the brand owner," she said. "Although you could allege that such a registration was 'an instrument of fraud', such an action was often very expensive to pursue through the courts."
Tilbury welcomed the Coke Cola decision. "But it will be interesting to see how the Company Names Tribunal deals with possibly less clear cut cases," she said.
"It should be remembered that the Tribunal has made it clear that it will only deal with 'opportunistic registrations'," said Tilbury. "A practice will need to develop on what are or are not 'opportunistic registrations'. The Coke Cola Limited registration was probably the ultimate opportunistic registration. The question is where the line will be drawn on this issue in the future."