Why Companies House won’t protect you

It is a common misconception that if you have registered your name at Companies House then you have the right to use that name.  

There is, however, no link between Companies House and the Trade Marks Register and whilst Companies House may allow you to register the name, this does not mean that you can actually use it in the marketplace. 

This is because a 3rd party may have already registered a trade mark which is identical or similar to your company name, for identical or similar goods or services.  If so, then use of your Company Name could amount to an infringement of this earlier mark and you may be prevented from using your company name.  

This can be a costly mistake if you have to rebrand your company and change your website, marketing materials etc.  Just ask the owners of Glasgow's Ivy bar and restaurant, now known as Destill, who estimate it cost them £30,000 to change their company name after the famous London eatery The Ivy threatened to sue over trademark infringement (Ivy dispute).

Companies should also be aware that registration of a Company Name at Companies House does not provide any rights to prevent a 3rd party from using the same or similar name.  The only thing that it will do is prevent a 3rd party from registering the exact same name.  They can, however, register a variation thereof and use or register that name as a trade mark in relation to their particular goods or services.

But I can use the Law of Passing Off to prevent use of the same name, can’t I?

Potentially, but you should be aware that in order to succeed in an action for Passing Off it is necessary to prove that you have goodwill in the name (which can take a number of years to acquire).  Even if goodwill can be established, you must then prove that there has been a misrepresentation and that there has been, or there would be, resulting damage.  Passing off actions are generally cost prohibitive, due to the amount of evidence required.

So, what can I do?

If you have an existing Company Name registration, then you should seek to register that name as a trade mark and hope that a 3rd party has not beaten you to it!

If you are looking to establish a new company, then before registering your chosen name with Companies House (and investing time and money in promoting it) you should have searches conducted to ascertain that the name is free for use.  If it is, you should seek to register the name as a trade mark in order to ensure that you have the right to continue using it.  Registration also provides you with the right to object to the use of an identical or similar mark by a 3rd party.  This applies to the adoption of any trade mark in a business, such as company logos and product names.

But the name of my company is just a description of my goods/services

If this is the case then you probably won’t be able to register it as a trade mark.  If, however, you use it in a particular stylisation or with a distinctive logo, then you may be able to secure registration.  Whilst this will not provide you with the right to monopolise use of the descriptive name itself, it will provide comfort that you can continue using the mark.  

Furthermore, if you have used the name for a significant period of time and on a significant scale, to the extent that it has come to denote the goods or services of your company, then you may be able to secure registration on the basis of acquired distinctiveness.  If you are unsure as to whether your company name would be registrable, it is worth contacting a trade mark attorney for advice.

trade marksPhil Sanger