Fri 21st May 2021
Insurance briefing: Company name tribunal cases involving insurers
Services: Brand protection, Company and domain names, Start up or scale up
Sectors: Finance and insurance
Whether you have come up with a new company name yourself or you have invested in the services of a specialist branding agency, it is important to ensure that any name that you choose does not infringe the intellectual property rights of another brand owner. In a worst-case scenario, you could find yourself having to rebrand as well as compensate the other brand owner.
The large insurance companies guard their brand portfolios fiercely, and an analysis of the cases at the UK IPO Company Name Tribunal indicate that Allianz, Axa and Zurich are particularly active.
Company names can be objected to at this Tribunal, if they are the same, or misleadingly similar to one in which there is earlier goodwill. For example, ALLIANZ INVESTMENTS LIMITED and ALLIANZ CORPORATION INC LIMITED were deemed to be too close to the name ALLIANZ.
Not all names are considered similar and refused. It must be sufficiently similar that it is likely to mislead by suggesting a connection. For example, AXA was considered sufficiently different from AXALS CORP LLP (Ref: 0-421-16).
There are many defences to a Company Name action. In particular, it is a defence if:
- the name was adopted in good faith - for example, AXA ENGINEERING LIMITED and ZURICH INVESTMENTS LIMITED were allowed due to good faith.
- the interests of the applicant are not adversely affected to any significant extent;
- the defending company operates under the name, or is proposing to do so, and has incurred significant start up costs
- the name was registered before the objecting party commenced the activities relied on to show their goodwill.
In practice, many Company Name Tribunal actions are won on default, simply because they are not defended. For example, the following were all successful objections:
- GUARDIAN FINANCIAL SERVICES HOLDINGS UK LIMITED successfully objected to GUARDIAN ASSET MANAGEMENT LIMITED and GUARDIAN CLAIMS DIRECT LTD,
- ZURICH successfully objected to ZÜRICH FINANCIAL SPECIAL RISK LIMITED, ZÜRICH RISK TRANSFER LIMITED, ZÜRICH CONSULTING GROUP LIMITED, ZÜRICH CAPITAL, ZÜRICH PROPERTY MERCHANTS LIMITED and ZÜRICH PARTNERS LIMITED.
- PRUDENTIAL IP SERVICES LIMITED successfully objected to PRUDENTIAL VACATION PROPERTIES LIMITED, PRUDENTIAL RECRUITMENT LIMITED, PRUDENTIAL CONSULTING LTD and PRUDENTIAL SECURITY AND SUPPORT SERVICES LIMITED.
- ALLIANZ successfully objected to P & D ALLIANZ LTD, ALLIANZ TRADER LIMITED, EPP ALLIANZ LIMITED, ALLIANZ SECURITY LIMITED and ALLIANZ CONTRACTORS LIMITED.
- AXA successfully objected to AXA SECRETARIAL SERVICES LIMITED, AXA MANAGEMENT UK LIMITED, and AXA MANAGEMENT LIMITED.
- AVIVA INVESTMENTS LIMITED objected to AVIVA WINES & SPIRITS LIMITED and AVIVA ADDA ASSOCIATES LIMITED.
When to object to a company name
It may be worth pursuing an action via the Company Name Tribunal as there is a good chance your competitor will back down and will not defend their name. However, you need to be aware of the possible defences, including that the other party acted in good faith.
What to do if you receive a letter objecting to your company name
Seek legal advice and consider the defences available. Is your company name similar?
Don’t forget about a trade mark registration
Remember that, having a great company or domain name does not replace trade mark registrations as a means of protecting your important brands.
How we can help
When developing a new brand for a product or service, once you have a shortlist, then we can help you with:
- research on the use of similar names by others;
- clearance searches on names;
- watching services on domain names, trade marks, company names;
- protection by registration of brands and names.
For more information on our expertise in the insurance sector or advice on brand protection and trade marks in the UK, Europe and internationally, please contact James Cornish on 44 (0) 207 831 7929 or email email@example.com.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in May 2021.