Preserving brand value in a downturn – defend against rogue company/domain names

 
Historically companies have faced more competition and encroachment on their IP rights during an economic downturn.  As with many things, prevention is better than cure.  We are therefore taking this opportunity to remind clients that recent legislation has made it easier for them to defend their trade mark rights. 

Since 1 October 2008 brand owners with goodwill in the United Kingdom have been given the right to take action against “bad faith” company name registrations that include their trade marks or similar marks, which was not previously possible.

Under the new legislation, if a company name is registered that is either the same as the name in which the brand owner has goodwill or is sufficiently similar that it is likely to mislead a consumer into believing there is a connection with the brand owner, the Company Names Adjudicator (which is the UK Intellectual Property Office) can force a company to change its name.

While this law will give brand owners a more robust framework in which  to protect their rights in a name, there are some circumstances where the change of name may not be forced.  These include, but are not limited to, situations where the company has started to operate under the disputed name or where the name was adopted in good faith, so it is important for brand owners to take speedy action.  We offer a company names watching service for £150 per mark per annum to provide automatic alerts if a company name has been registered which is identical or similar to the trade mark (brand name) being watched.

Registered Trade Mark owners also have specific rights to object to bad faith domain name registrations and we can advise on this, and on watching activities.

Mathys & Squire has recently expanded its Trade Marks and Brands team with Gary Johnston and Rob Hawley in Manchester joining Margaret Arnott’s established team in London.

If you would like us to provide further information on any of our brand protection or other IP services, please get in touch with your usual contact at Mathys & Squire, or email brands@mathys-squire.com.