Use of a Registered Trade Mark as a Business Name

We are sometimes asked to advise whether the use of a Registered Trade Mark by another party constitutes use of the trade mark which can be prevented in law.

If the trade mark is being used as part of a business name there are various points to consider.

Use of a trading name which incorporates a trade mark can constitute trade mark infringement, but not necessarily.

To constitute infringement, the use must be:
- in the course of trade,
- in relation to goods or services which are identical with or similar to those for which the trade mark is registered, and
- include a likelihood of confusion on the part of the public.

Examples of uses which would probably NOT constitute infringement are:
1. Use other than in the course of trade, e.g. the name of an internet discussion group.
2. The sale of goods or services which bear no similarity to those for which the mark is registered.

If the marks are identical and the goods or services are also identical there is a presumption that confusion will result, but otherwise it is open to an infringer to show that the public will not be misled by his use of the mark.

Companies House does not routinely check whether applications for new company names incorporate registered trade marks, and it is possible for someone to register a company name incorporating another person's trade mark. However, that does not give that person an automatic right to use the trade mark, and they must be extremely careful not to use the name in a manner which amounts to trade mark infringement.

The domain name registration authorities are more alert to the danger of people registering domain names which include other peoples trade marks, and there is a procedure for dealing with disputes over domain name ownership which are generally resolved in favour of registered trade mark holders.

© Craske & Co., 2010

Last updated: 27 December 2010