Prevention and Resolution of Clashes between the Company Names Register and the Trade Marks

Register

Presented by

Christopher Mapani

Senior Examiner (Trade Marks) - Zambian Patents and Companies Registration Office (PACRO)

The Patents and Companies Registration Office

Outline of Presentation

Trademarks

Evolution in trademark functions

Corporate Names

a company name generally designates the business being

carried out

traditionally, criteria for approval of a name has

primarily been to ensure that it does not misrepresent its

industry

Corporate Names

in several jurisdiction, searches are done but

largely to check whether a proposed name is

confusingly similar to a registered name

Corporate Names

rarely is a proposed company name evaluated

as a prospective trademark

Corporate Names

but a company name is much more than a symbol of the

business – it represents trust, confidence and tells a story

about why the company exists

Corporate Names

Commonalities between company names and trademarks

Guidance of the ECJ on conflicts between Company Names and

Trademarks

a trademark proprietor can only prevent its unauthorised use where

such use affects the essential function of the mark (Refer to

Judgment Number C-17/06 involving Celine SA and Celine Sarl, French

Companies).

the purpose of the company name is generally not to

distinguish the goods produced but to designate the business

being carried out

Guidance of the ECJ on conflicts between Company Names and

Trademarks

Guidance of the ECJ on conflicts between Company Names and

Trademarks

but while attempting to draw the line between functions of a company name and a

trademark, the court did not dispute that a company name could distinguish goods and

thus infringe upon a trademark. The court appeared more concerned with giving

guidance on circumstances that could give rise to infringement.

Recognition of trademark rights by corporate law in

selected jurisdictions

Similarly under our guidelines for

approval of company names in which the

trademark is registered are such as not to cause the public to

confuse the trademark with the name of the

company.

Section 69 of the Companies Act of the United Kingdom (of 2006) confers upon

brand owners the right to object to misleading

company names

Conflicts between domain names and trademarks

The way conflicts between trademarks and the registration of domain names are being resolved

provide valuable lessons:

Possible solutions to conflicts between trademarks and company names

Possible solutions to conflicts between trademarks and company names

Possible solutions to conflicts between trademarks and company names

Conclusion

I THANK YOU.