IP UPDATE
Right to Object to a Registered Company Name
At present, Companies House has the power to refuse to register a company name which is identical or virtually identical to an earlier registered company name.
However, new provisions of The Companies Act 2006, coming into force on 1 October 2008, will enable a party to object to the registration of a company name on the basis that it is:
• The same as a name that is associated with the objecting party and in which it has goodwill (which is defined as "reputation of any description")
• Sufficiently similar to such a name that its use in the UK would be likely to mislead by suggesting a connection between the parties
That said, a number of defences will be available, including:
• The new company has actually used the name or made preparations for such use
• The name was adopted in good faith
• The interests of the objecting party are not adversely affected to any significant extent
• The name was registered before the objecting party achieved any goodwill
These defences will not apply if the objecting party can demonstrate that the company name was registered as a means of obtaining money from it or in order to prevent it from registering the name itself.
Any objection under these provisions will be heard by the appointed Company Names Adjudicator at the UK Intellectual Property Office.
Finally, it should be noted that these provisions will only apply to companies. Actions against sole traders, partnerships or limited liability partnerships must continue to be brought under the ambit of trade mark infringement and/or passing off.
Further Cooperation between Patent Offices
As reported in our Autumn 2007 Newsletter, the UK Intellectual Property Office (UK-IPO), the US Patent and Trade Mark Office (USPTO) and the Japanese Patent Office (JPO) have entered into a cooperation agreement to speed up patent prosecution. This initial pilot project has now been extended.
To date, the agreement has only permitted accelerated examination in the US, Japan or the UK if there has already been an examination report issued on a corresponding patent application in one of the other cooperating countries, where that corresponding application was a directly filed patent application. However, the new, extended agreement also permits acceleration where the corresponding application was filed as a national stage patent application out of an International (PCT) application.
This, therefore, significantly increases the number of applications where acceleration could be requested, given that it is common for US or Japanese patent applications to be filed via the PCT procedure rather than directly with the USPTO or JPO.
