Being accused of "passing off"

cavework

Equaliser123 wrote: »

Registering the company name at Co's House is poor advice. For a start it would mean that the nature of the company moves from (presumably) a sole trader to a limited company which will involve a whole new regime - different taxation, governance, formalities, etc.

How long has your business been trading?

In my view (lawyer who used to do a lot of work in respect of IP infringement) it is a bluff and they will not take action against you unless they can demonstrate that a substantial number of customers have been confused.

We are a partnership and had the exact same problem when a new company moved into our area. we even received phone calls complaining about their standard of work and debt collection agencies contacting us.
We registered the company name at Companies house but non trading. It was enough to get rid of the problem and all we have to do is ask out accountant to submit non trading accounts once a year to protect our company name.

Equaliser123

cavework wrote: »

We are a partnership and had the exact same problem when a new company moved into our area. we even received phone calls complaining about their standard of work and debt collection agencies contacting us.
We registered the company name at Companies house but non trading. It was enough to get rid of the problem and all we have to do is ask out accountant to submit non trading accounts once a year to protect our company name.

Passing off has zero to do with registering names at Co's house. You may have registered the name as a dormant company but that is not sufficient to defeat a legit passing off action.

forgotmyname

Is it true you cannot trademark a word that is used in the dictionary? ie. crown.

Thanks

zppp

cavework wrote: »

We are a partnership and had the exact same problem when a new company moved into our area. we even received phone calls complaining about their standard of work and debt collection agencies contacting us.
We registered the company name at Companies house but non trading. It was enough to get rid of the problem and all we have to do is ask out accountant to submit non trading accounts once a year to protect our company name.

OK that is useful. It is a matter of protecting your company. I can give some advice as I have studied aspects of The Companies' Act 1984 and 2006 with respect to registration of names.

To meet s.66 of The Companies Act 2006 (which will apply to you since you registered your business in 2009), you must not register the same name as another company on the register. This would be trying to register another company as Clean-Tec when one is on the register. Thus you are not in breach here.

What specifically applies to you here is the similarity of the name which is covered under s.67 CA 2006. If, in the Secretary of State's opinion the name is too similar, they can issue a direction to change name. According to s.68(2a) this must be done within 12 months of the registration date.

The registration system is unfortunately not checked and not all registrations are passed via an adjudicator prior to being added to the index. This can result in what are known as oppourtunistic registrations, where some will register similar names to cause deliberate confsion or 'passing off'.

The company who were incorporated in 2004, have got the right to put in an objection to Companies House under s.69 CA 2006. Again, the 12 month rule applies, so if they complain outside of the 12 months, nothing can be done. If it is within 12 months when they make a complaint, and it is upheld will require a name change.

With regards to passing off, the burden of proof is on them and if they are in a different county, I don't see how it could be passing off, especially since your registered name with CH is dormant. They would have to prove that it is causing their company a loss of business or genuine confusion on behalf of their customers. Looking at the CH index, they would have to argue that with many people with similarities.

If you need any further help PM me and I can give you some case law if that would help.

zppp

forgotmyname wrote: »

Is it true you cannot trademark a word that is used in the dictionary? ie. crown.

Thanks

There are special exemptions for company names using words such as Royal for example, as long as permission is obtained from the Secretary of State. There is a list of them here;

http://www.companieshouse.gov.uk/about/gbhtml/gp1.shtml#appA

This is reaffirmed in The Company, Limited Liability Partnership and Business Names (Sensitive Words and Expressions) Regulations 2009 (SI No. 2615)

Equaliser123

zppp wrote: »

There are special exemptions for company names using words such as Royal for example, as long as permission is obtained from the Secretary of State. There is a list of them here;

http://www.companieshouse.gov.uk/about/gbhtml/gp1.shtml#appA

This is reaffirmed in The Company, Limited Liability Partnership and Business Names (Sensitive Words and Expressions) Regulations 2009 (SI No. 2615)

That relates to names of companies. Not trademarks.

Equaliser123

zppp wrote: »

OK that is useful. It is a matter of protecting your company. I can give some advice as I have studied aspects of The Companies' Act 1984 and 2006 with respect to registration of names.

To meet s.66 of The Companies Act 2006 (which will apply to you since you registered your business in 2009), you must not register the same name as another company on the register. This would be trying to register another company as Clean-Tec when one is on the register. Thus you are not in breach here.

What specifically applies to you here is the similarity of the name which is covered under s.67 CA 2006. If, in the Secretary of State's opinion the name is too similar, they can issue a direction to change name. According to s.68(2a) this must be done within 12 months of the registration date.

The registration system is unfortunately not checked and not all registrations are passed via an adjudicator prior to being added to the index. This can result in what are known as oppourtunistic registrations, where some will register similar names to cause deliberate confsion or 'passing off'.

The company who were incorporated in 2004, have got the right to put in an objection to Companies House under s.69 CA 2006. Again, the 12 month rule applies, so if they complain outside of the 12 months, nothing can be done. If it is within 12 months when they make a complaint, and it is upheld will require a name change.

With regards to passing off, the burden of proof is on them and if they are in a different county, I don't see how it could be passing off, especially since your registered name with CH is dormant. They would have to prove that it is causing their company a loss of business or genuine confusion on behalf of their customers. Looking at the CH index, they would have to argue that with many people with similarities.

If you need any further help PM me and I can give you some case law if that would help.

You are talking purely about company names. Passing off is not dependent upon the name of a company. The OP does not even have a company but rather is an unincorporated business.

zppp

Equaliser123 wrote: »

You are talking purely about company names. Passing off is not dependent upon the name of a company. The OP does not even have a company but rather is an unincorporated business.

Um, the OP has stated they have a dormant company, hence why I have said what I have said. It may not answer the trademark question, but when the OP talks about protecting their company name, I have given guidance as such.

cavework wrote: »

We registered the company name at Companies house but non trading.

pelirocco

zppp wrote: »

Um, the OP has stated they have a dormant company, hence why I have said what I have said. It may not answer the trademark question, but when the OP talks about protecting their company name, I have given guidance as such.

Cavework wasnt the OP

WhiteHorse

paulwf wrote: »

... legal services that just do an automatic trawl of similar names then blasts out lots of letters and sees what happens.

True. Many passing off actions are opportunism by shady law firms.