copyright united-kingdom limited-liability-company trade-name
What to do if you are sued for company name that resemble an existing company name in the UK?
<p>I've been sued by Oracle for company name under the provisions of section 69(0) of the Companies Act 2006 (the Act) in The Company Names tribunal in the UK.</p>
<p>My company name is JAVASCRIPT CONSULTING LTD.</p>
<p>Tribunal decision: <a href="https://www.gov.uk/government/publications/company-names-tribunal-decision-javascript-consulting-ltd/decision-on-javascript-consulting-ltd" rel="nofollow noreferrer">https://www.gov.uk/government/publications/company-names-tribunal-decision-javascript-consulting-ltd/decision-on-javascript-consulting-ltd</a></p>
<p>Did anyone had similar issues?</p>
<p>How could I resolve this situation?</p>
<p>I would be grateful for any advice.</p>

<h1>History of the case</h1>
<p><a href="https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002100658" rel="noreferrer">Javascript is a trademark of Oracle since 1996/1999.</a> Anything that can cause confusion of origin or endorsement is thus infringing on the trademark of Oracle.</p>
<p>A company explicitly named after a product of another implies to be endorsed, so Oracle sued that company under <a href="https://www.legislation.gov.uk/ukpga/2006/46/section/69" rel="noreferrer">S69(1) of the Companies Act 2006</a> in November 2019.</p>
<p>The company did not respond to any level of the lawsuit, which meant they did not contest any arguments - the even refused to take the mail<sup>1</sup>. It was their duty to show, that they fulfilled one of the provisions in Section 69(4), which could grandfather their name.</p>
<p>As a result, the complaint was upheld as a matter of law (last sentence of S69(4)), Section 69(5) did not come up to the test as there was no response. The tribunal ordered the Company to need to rename and pay the fees.</p>
<hr />
<p><sup>1 - Regarding the keywords used by Royal Mail: <strong>&quot;Not called for&quot;</strong> is applied to mails that would not fit into a letterbox and nobody was available to sign for them. A postcard to get redelivery arranged or pick it up at the post station is deposited instead. If not <em>called for</em> within a specified timeframe, it is returned to the sender. <strong>&quot;refused&quot;</strong> is applied to mail that is explicitly denied at the door by the receiver and then returned to the sender.</sup></p>
<h1>Next steps: GET A LAWYER!</h1>
<p>Whether this situation is salvageable is very much dependant on the specifics we don't know. <strong>It is a question for the lawyer employed by the respondent as the respondent needs proper legal advice from a licensed professional now.</strong> Respondent might also want to familiarize themselves with the rules of the <a href="https://www.gov.uk/government/organisations/company-names-tribunal/about" rel="noreferrer">Company Name Tribunal</a> and if there is an appeals process available so they can ask their lawyer for more specific advice about the situation. They should be honest to their lawyer and tell them the whole situation.</p>

<p>The simplest way to &quot;resolve&quot; this situation is to</p>
<ol>
<li>Change the name of your company to something that doesn't contain or resemble the word &quot;javascript&quot; and</li>
<li>Pay £800 costs to Oracle.</li>
</ol>
<p>The alternative is to appeal to the High Court, but you would need a lawyer who is an expert in company law and some reason to think that an appeal is likely to be successful.</p>
<p>The third option is to ignore this, and have bailiffs knocking on your door.</p>

<p>Firstly, this had nothing to do with trademark or copyright infringement as the question and one of the answers suggest.</p>
<p>This was an action taken under Section 69(1) of the Companies Act 2006 which states:</p>
<blockquote>
<p>A person (“the applicant”) may object to a company's registered name
on the ground (a) that it is the same as a name associated with the
applicant in which he has goodwill, or (b) that it is sufficiently
similar to such a name that its use in the United Kingdom would be
likely to mislead by suggesting a connection between the company and
the applicant.</p>
</blockquote>
<p>This is referring to the requirement in Section 66(1):</p>
<blockquote>
<p>A company must not be registered under this Act by a name that is the
same as another name appearing in the registrar's index of company
names.</p>
</blockquote>
<p>In other words, Oracle must have a registered company which they have alleged your company name is similar to <strong>and</strong> that one of the conditions in Section 69(1) applies. They did <strong>not</strong> need to establish that there was any trademark or copyright, although the existence of such might have helped their case.</p>
<p>Schedule 3 of the Company, Limited Liability Partnership and Business (Names and Trading Disclosures) Regulations 2015 contains details of what does and does not constitute a &quot;similar&quot; name to an existing name.</p>
<p>Once Oracle made the application, the burden of proof was on you pursuant to Section 69(4) of the Act to establish on the balance of probabilities that one of the following applied:</p>
<blockquote>
<p>(a) that the name was registered before the commencement of the
activities on which the applicant relies to show goodwill; or (b)that
the company— (i) is operating under the name, or (ii) is proposing to do
so and has incurred substantial start-up costs in preparation, or
(iii) was formerly operating under the name and is now dormant;or
(c) that the name was registered in the ordinary course of a company
formation business and the company is available for sale to the
applicant on the standard terms of that business; or (d) that the name
was adopted in good faith; or (e) that the interests of the applicant
are not adversely affected to any significant extent.</p>
</blockquote>
<p>The sub-section goes on to state that</p>
<blockquote>
<p>&quot;if none of those is shown, the objection shall be upheld&quot;</p>
</blockquote>
<p>So, what you should have done within the time limit, is to raise one or more of those defences. If you had managed to establish one successfully, then pursuant to Section 69(5) the burden of proof shifts to Oracle who would have to show that:</p>
<blockquote>
<p>&quot;the main purpose of the respondents (or any of them) in registering
the name was to obtain money (or other consideration) from the
applicant or prevent him from registering the name&quot;</p>
</blockquote>
<p>Failing that, then you would have won your case pursuant to Section 69(6):</p>
<blockquote>
<p>If the objection is not upheld under subsection (4) or (5), it shall
be dismissed.</p>
</blockquote>
<p>In future, you should be aware that the worst possible thing you can do when facing a court claim is to ignore it. That is very unlikely to make the problem go away, and if the matter does end up at trial, you will probably lose if you haven't submitted a defence.</p>
<p>As stated in the other answers, your options are two-fold:</p>
<ol>
<li>Comply with the order by changing the name and paying the costs.</li>
<li>Appeal under Section 74(1) of the Act. You must do this <strong>within 1 month of 10 September 2020</strong> so you should not waste any time if this is your intention. You also need to notify the adjudicator that you have done so in order for them to suspend the order under Section 74(3), failing which you may need to comply with the order while the appeal is conducted. Given that you submitted no defence at the time you will probably have to have a very good reason (e.g. they used the wrong address for service) for your appeal to be heard.</li>
</ol>
