Government gives advice on misleading business names
The Office of Fair Trading (OFT), a UK government department, has issued a document entitled "Misleading or Otherwise Undesirable Names" under its powers under the Consumer Credit Act 1974. This 23-page document deals with all forms of unsuitability of business names. It does not specifically address issues of trademark law and makes this clear:
“4.15 The OFT has no power to protect 'title' to a name on behalf of a business. The protection of its trademarks or goodwill is of itself a matter for individual businesses to address. We will only challenge the use of the same name in the licences of totally separate entities, where there is no arrangement between them, and/or when we have reason to believe consumers will be, or are likely to be, misled as to the person with whom they are dealing.”
However, the OFT recognises that there are times when the choice of a name can have substantial repercussions for an IP owner and for the consumer, as when a business wants to trade under a brand which it does not own, but with which it may be associated - for example, where it is a franchisee or licensee if a well-known brand. On issues such as this, the OFT says:
“4.19 We have considered our policy on this issue and taken the view that associated businesses may use a common trading name provided that this is reflective of the true nature of their commercial relationship (rather than one business 'passing itself off' as having an association with another business/brand where no such association exists or otherwise misrepresenting the nature of its relationship with another business).”
Given that a business name that is misleading or deceptive may not be entitled to protection as a registered trademark to the extent that this is the case, the OFT guidelines may be of assistance to trademark examiners and others.
Jeremy Phillips, IP consultant to Olswang LLP, London
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