The Highest Form of Flattery? Taking Action Against Impersonation
A BBC News article has highlighted a recent increase in the use of well-known restaurant names in fraudulent company registrations at Companies House. The article reports that over 750 ‘fake’ companies, many with names containing a misspelling of a well-known restaurant business or proprietor (according to data compiled by an independent fraud consultant), have been added to the Register in the past six weeks alone.
Objecting to a company name via the Company Names Tribunal
Removing certain data from the Companies Register can be a complex and time-consuming process. However, brand owners being impersonated by similarly-named companies can already take swift action by making a complaint to the Company Names Tribunal (“CNT”), which if successful will result in the Registrar issuing an order that the name of the company in question is changed.
The CNT is a specialised tribunal through which applicants can request that the Company Names Adjudicator order that a company name is changed, if it is too similar to an existing registered company name or trade mark registration or takes advantage of the goodwill or reputation in a brand owner’s trade mark contrary to Section 69 of the Companies Act, and the respondent cannot demonstrate any of the defences available under the Act.
The process of complaining to the CNT requires the applicant to demonstrate that they either have an earlier Company Name Registration or Trade Mark Registration in the jurisdiction or possess goodwill in a trade mark, sometimes with reference to documentary evidence. It is therefore advisable to engage a trade mark professional to assist with filing the application, to ensure the applicant’s goodwill is properly demonstrated.
The official fee for filing a complaint is £400, and the timeline to a decision can be as little as two months (if the application is not defended). As our firm reported in its briefing published after the 10th anniversary of the CNT’s foundation, in its first 10 years the success rate for applicants to the CNT was around 97%, and the majority of complaints were undefended. Complaints to the CNT are therefore a low-cost option for those wishing to deal with opportunistic company registrations quickly.
For further information regarding the process of objecting to a company name registration via the Company Names Tribunal, please see our firm’s briefing here.
Other ways to tackle impersonation of your brand
For more serious cases involving ‘fake’ companies using a brand owner’s trade mark in their company name (for example where the company has commenced trading under the registered name, which is one of the defences available against a CNT action), brand owners have the option of commencing Court proceedings, for example under the provisions of the UK Trade Marks Act 1994 (As Amended) or the English common law of passing off. In some cases, the written threat of action (either through the CNT or via the Courts) can be sufficient to persuade a third party to cease their use of a brand owner’s trade mark.
Therefore, serious cases of impersonation of a brand by a third party, including registered companies, should be discussed with a trade mark professional.
Impersonation of brands in domain names
Like company names, domain names similar or identical to well-known brands can be valuable assets to bad faith actors as these can be used to impersonate well-known businesses, and can be registered without the need to verify the identity of the owner. In fact, a domain name can be registered through third parties known as privacy services who use their own company’s details to register domain names on behalf of their customers, making it more difficult to identify the ultimate owner of a domain name.
Trade mark professionals can assist with dealing with this problem by filing a complaint with the dispute resolution service for the domain in question. These services are similar in many ways to proceedings before the CNT, often also requiring a brand owner to demonstrate that they have prior rights in a trade mark which is reproduced (either wholly or with slight changes) in a domain name registered by a third party. Further information on these processes can be found in our overview of domain name disputes here.
Further developments anticipated
In October of last year, it was announced by Companies House that the enactment of the Economic Crime and Corporate Transparency Bill would give the Registrar of Companies greater powers to require identity verification for newly-registered company directors, and conduct “stronger checks on Company Names”.
Companies House has since confirmed the earliest date they will be implemented is 4 March 2024, which may be delayed. It therefore remains to be seen whether Companies House will implement any new measures to tackle the increased trend of company name registrations impersonating well-known brands.
For advice on taking action against opportunistic company or domain name registrations similar to your trade mark, contact a member of the J A Kemp trade marks team.