Two different companies with nearly the same name?

Greenman

Here's my question.

My sister registered her company in June 2000.
Then rebranded her shop/business in March 2004.
Another company providing the exact same service setup using the name of my sisters company adding in the word SOLUTIONS at the end and they're website is similar even the type face colour is the same.From what my sister says they're service is not up to much and she feels they're piggy backing on her business.

Surely thats the job of the CRO companies registration office to sort out things so the public are not mislead.

Can I set up a shop and call it Microsoft Solutions or Powercity Solutions?

Any feedback welcome,thanks.

MrMicra

Greenman wrote: »

Here's my question.

My sister registered her company in June 2000.
Then rebranded her shop/business in March 2004.
Another company providing the exact same service setup using the name of my sisters company adding in the word SOLUTIONS at the end and they're website is similar even the type face colour is the same.From what my sister says they're service is not up to much and she feels they're piggy backing on her business.

Surely thats the job of the CRO companies registration office to sort out things so the public are not mislead.

Can I set up a shop and call it Microsoft Solutions or Powercity Solutions?

Any feedback welcome,thanks.

If they are trading on her goodwill (pretending to be her) that's not allowed and she can claim damages and stop them from doing it. She should see a solicitor.

Greenman

MrMicra wrote: »

If they are trading on her goodwill (pretending to be her) that's not allowed and she can claim damages and stop them from doing it. She should see a solicitor.

Thanks for that.

BTW She is a Micra driver.

Our man in Havana

The CRO should not have allowed a similar name to be registered as a company.

Long Onion

Passing off law may be of some aid to your sister;


Taking business by presenting goods or services as someone else's is actionable at common law. The tort is known as "passing off" in the British Isles and most of the Commonwealth, "palming off" in the USA and unfair competition elsewhere. The usual remedies are injunctions, delivery up of offending items and inquiries as to damages or accounts of profits. There is an international obligation to assure effective protection against unfair competition under art 10bisof the Paris Convention Classic Trinity


Passing off is judge made law. The modern law is to be found in a handful of cases of which the most recent are the decisions of the House of Lords in Reckitt & Colman Products Ltd. v Borden Inc [1990] RPC 341 and Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731. In the first of those cases, Lord Oliver said, at page 406, that a claim may be brought where:

the claimant’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and

the claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the defendant’s misrepresentation.

This restatement of the elements of passing off is often referred to as the "classic trinity".
Extended Forms of Passing off
These basic principles have been refined over the years to protect appellations of origin, such as Swiss chocolate in Chocosuisse Union des Fabricants Suisses de Chocolat v Cadbury Ltd. {1999]EWCA Civ 856[1999] EWCA Civ 856, or champagne as in J Bollinger v Costa Brava Wine Co. Ltd. [1960] Ch 262. They have also been extended to what is sometimes called "reverse passing off", that is to say where the defendant claims the claimant's work as his own (Bristol Conservatories Ltd. v Conservatories Custom Built [1989] RPC 455).
Related Causes of Action
The action of passing off is closely allied to the law of trade marks, the Trade Descriptions Act 1968 and Community legislation on the protection of geographical designations of origin. Claims for passing off are usually brought at the same time as actions for infringement of a registered trade mark.
Enforcement
Claims for passing off are brought in the Chancery Division of the High Court of Justice. The vast majority of such claims are disposed of upon an application for interim injunction. The reason for that is that the losing party either has to change its packaging or quit the market. Either way, it has much less interest in the brand by the time the action comes on for trial.
An actionable misrepresentation may also be an offence under the Trade Descriptions Act 1968. Prosecutions are brought by local authority trading standards officers.
Risk Factors

Brands are among the most valuable assets of a business and the action of passing off is indispensable for their protection for two reasons. First, not every type of branding qualifies for registration as a trade mark. Secondly, no action may be brought on a mark until after registration. If goodwill, misrepresentation and damage can be proved an action will lie regardless of whether the wrongdoing was intended and there is no threats action to protect those accused of passing off from intimidation of their customers.□

Greenman

Bond-007 wrote: »

The CRO should not have allowed a similar name to be registered as a company.

Do the CRO ever act?

Tom Young

Greenman wrote: »

Do the CRO ever act?

Why would the CRO Act? The point is that they tend not to allow similar names being registered but the reality is that name similarity might be valid.

The relief here is injunctive generally not just application for damages as someone states above. The law of Passing Off may have some application but we did debate this issue on another thread, the tort is called injurious falsehood and the test is as it is.

MrMicra

Tom Young wrote: »

The relief here is injunctive generally not just application for damages as someone states above. The law of Passing Off may have some application but we did debate this issue on another thread, the tort is called injurious falsehood and the test is as it is.

Tom if you are referring to me I said specifically that "she can claim damages and stop them from doing it".

Damages as I am sure you are aware are a remedy for passing off.

Also this is not an injurious falsehood the tort is passing off (unless there is recent authority of which I am unaware). The false statement that the other company are making is about themselves and injurious falsehood would require that they maliciously make a false statement about Greenman's sister's company so as to cause Greenman's sister harm.

As regards the CRO they don't check names it isn't their job.

If there is recent authority on injurious misstatement you would be doing me a great favour by drawing it to my attention.

Tom Young

MrMicra wrote: »

Tom if you are referring to me I said specifically that "she can claim damages and stop them from doing it".

Damages as I am sure you are aware are a remedy for passing off.

Also this is not an injurious falsehood the tort is passing off (unless there is recent authority of which I am unaware). The false statement that the other company are making is about themselves and injurious falsehood would require that they maliciously make a false statement about Greenman's sister's company so as to cause Greenman's sister harm.

As regards the CRO they don't check names it isn't their job.

If there is recent authority on injurious misstatement you would be doing me a great favour by drawing it to my attention.

If you're actually serious about line one and the previous post, then you might explain in detail how a court would abate or order the cessation of the wrong or tort?

Damages are not an adequate remedy in the circumstances, and to say otherwise is plainly wrong. I will caveat that with the clear statement that the test for injunctive relief would need to be passed and as usual this is a test that has been the subject of much discussion on this thread before.

Practically, what a person or business wants is the cessation of the action causing them damage, no amount of cash can compensate for that. While it may well be the case that damages are included in outcome of a trial the restraining of the actions which are damaging the reputation, business etc. to the complainant is of greater importance.

In re. my remark above. The tort of injurious falsehood stems from a wrong leveled out of a wrong stated or impugned against a persons titled to land - Case: Bliss v Stafford (1573) Owen 37 74 ER 882 and other cases. It now encompasses both slander of trade and slander of goods. The nature of the tort is that the falsehood deceives others about the plaintiff so as to cause loss to the plaintiff. This differs from defamation as the tort may well reflect perfectly well on the plaintiff while nonetheless causing him loss.

The law of Passing Off may have some application but we did debate this issue on another thread, the tort is called injurious falsehood and the test is as it is.

If we want to get into the vagaries of the Business Names Act 1963 we can, I think Section 14 might be what you need to go read.

The reasons I used to word may is that the OP never gave us a temporal reference in relation to the sequence of founding and/or incorporation of the undertakings. It may be the case that the later firm had their business in being and trading in advance of the claimant/OPs firm.

If there is recent authority on injurious misstatement you would be doing me a great favour by drawing it to my attention.

'injurious misstatement' ?

There are a few authorities in re. Injurious Falsehood which state the test and the act in relation to this tort and the requirement for publication in the form stated by the OP. You might want to look at: Meridian v Eircell there are some others, not that they necessarily support my point properly.

Tom

MrMicra

Tom Young wrote: »

If you're actually serious about line one and the previous post, then you might explain in detail how a court would abate or order the cessation of the wrong or tort?

Tom,
I said in the first reply to Greenman I suggested that if sister spoke to a solicitor she would be able to:
"claim damages
and
stop them from doing it"

I did not say:
"she can claim damages
and these damages will in and of themselves
stop them from doing it"

The 'it' that is being complained of is:

Tom Young wrote: »

From what my sister says they're service is not up to much and she feels they're piggy backing on her business.

This "piggy backing" can be stopped by obtaining interlocutory relief and the details of the situation appear nearly identical to those in Local Ireland v Local Ireland - Online Ltd and the test used to decide whether or not interlocutory relief will be granted is the Campus Oil test (McMahon and Binchy 31.62)

I did not feel that it was necessary to say this to Greenman as all he needed to know was if it was worth his sisters time shelling out for a solicitor.

Tom Young wrote: »

In re. my remark above. The tort of injurious falsehood stems from a wrong leveled out of a wrong stated or impugned against a persons titled to land - Case: Bliss v Stafford (1573) Owen 37 74 ER 882 and other cases. It now encompasses both slander of trade and slander of goods. The nature of the tort is that the falsehood deceives others about the plaintiff so as to cause loss to the plaintiff. This differs from defamation as the tort may well reflect perfectly well on the plaintiff while nonetheless causing him loss.

Tom Young wrote: »

'injurious misstatement' ?

My apologies Tom; McMahon and Binchy (3rd edition) 35.26 (of which the explanation above is an excellent and extremely precise summary) goes on to say "The tort differs from negligent misstatement..." I had that in my head when I replied to you.

While your statement of the law on injurious falsehood is the law as stated in McMahon and Binchy I don't see why you maintain that the tort applicable to the situation described in the original message is injurious falsehood. An injurious falsehood requires the making of some claim as to Greenman's sister's business. The other company are making a claim as to their own business.

The tort identified in the original message is not Injurious Falsehood it is as Long Onion said earlier Passing Off. McMahon and Binchy 31.55 give in passing a clear explanation of Passing Off "the defendant was seeking to deliberately trade on the Plaintiff's reputation".

The tort as described in the first message is Passing Off if (as you point out above) the second company registered their business name after Greenman's sister. The tort of Injurious Falsehood simply does not arise from:

Greenman wrote:

'iMy sister registered her company in June 2000.
Then rebranded her shop/business in March 2004.
Another company providing the exact same service setup using the name of my sisters company adding in the word SOLUTIONS at the end and they're website is similar even the type face colour is the same.From what my sister says they're service is not up to much and she feels they're piggy backing on her business.

Perhaps i am missing something.

I am unsure if the remark regarding section 14 of the Registration of Business Names act is directed at me. If it is I can only reiterate my statement that the CRO specifically deny that it is their responsibility to check for similar business names.

Our man in Havana

If it is I can only reiterate my statement that the CRO specifically deny that it is their responsibility to check for similar business names.

Indeed, they do not care how many businesses have the same names.

Greenman

Bond-007 wrote: »

Indeed, they do not care how many businesses have the same names.

Not to go off topic but what is the function of the CRO?

Our man in Havana

Their function is to register companies and business names.

They do not allow companies with the same or similar names to be registered.
They will allow business names that have the same or very similar names to be registered. These will be sole traders or trading names of limited companies. These can be duplicated.

Greenman

Bond-007 wrote: »

Their function is to register companies and business names.

They do not allow companies with the same or similar names to be registered.
They will allow business names that have the same or very similar names to be registered. These will be sole traders or trading names of limited companies. These can be duplicated.

Thank you Bond-007 its now over to my sister.

Much obliged to all who took an interest.