WHAT’S IN A NAME?
COMPANY NAME, BUSINESS NAME & TRADE MARKS
“What’s in a name? That which we call a rose by any other name would smell as sweet.” ― William Shakespeare, Romeo and Juliet
If you ask Shakespeare, a name is quite irrelevant. If you ask a business, a name is very important especially as it relates to its brand and image. With a name being so valuable and fundamental, it is even more important to ensure that this name is protected by all means and that the name chosen is in compliance with the law. The name may be the company name, a trade name (also known as the business name) or a registrable trade mark.
When incorporating a company, the Registrar of Companies will only register a company with a name that is acceptable to her subject to the provisions of the Companies Rules. The Companies Rules state that a company shall not be registered in a name which is (a) identical to the name of an existing company or an overseas company registered under the Companies Act, (b) similar or too close to the name of an existing company or other body corporate registered under the Companies Act and is likely to cause confusion in the marketplace or is otherwise misleading; or (c) in whole or in part infringes a registered trademark. Further a name must not be registered if the Registrar’s opinion is that the name is offensive, outrages public decency, contravenes the national policy on security or connotes an undertaking that is scandalous or immoral.
In Jamaica, every firm (which includes both incorporated and unincorporated bodies) or individual(s) having a place of business in Jamaica and carrying on business under a business name, must register this name as a business name in accordance with the Registration of Business Names Act and Business Name Rules. Certain exceptions apply. One example is where the name of the business represents the surname of the individual(s) who operate the business. The general rule is that whether you are a sole proprietor, partnership or company, the use of a name during trade should be registered as a business name. The business name is also referred to as the ‘trading as’ name. Failure to register a business name is an offence liable to a fine and in default of payment of the fine, to imprisonment. A business name registration can be refused if it is too similar or close to the name of an existing company or business name already registered by the Registrar of Companies.
A trade mark is any sign that is capable of being graphically represented and capable of distinguishing the goods or services of one business from those of another. A sign includes a word (including a personal name). The registration of a trade mark gives the owner certain property rights such as a right to prevent any person from using the mark in Jamaica without the owner’s consent and to prevent any person from using a mark which is similar or identical to that registered trade mark. As indicated earlier, no person can register a company using a name which infringes a registered trade mark. Note that the Trade Mark Act and the Companies Rules only protects registered trade marks. Therefore, the law of passing off which deals with unregistered trade marks would have to be relied on to stop someone who is using a name similar or identical to an unregistered trade mark.
The registration of a business name or incorporation of a company using a particular name is not tantamount to having a registered trade mark. To benefit from the protection of the Trade Mark Act, provided the name is registrable, you will need to also register the name as a trade mark.
EVERYTHING IS IN A NAME!
While Shakespeare may posit that naming things is irrelevant and the names of things do not affect what they really are, the protection granted to a business based on a registered name (whether company name, business name or trade mark) is undeniably one of the greatest protections that can be given to its brand and image. When a customer refers to a product or the provision of a service they refer to your name. Therefore, in selecting the name under which you wish to operate or market, it is also important that you ensure the name is both available and acceptable, whether as a trade mark or in accordance with the naming rules/policies followed by the Registrar of Companies.
Once a company name, business name or trade mark is registered, if same is used by another without the owner’s consent or a name which is similar or identical to the one registered is being used, the owner of the registered name may take legal action (under the Companies legislation or Trade Mark Act, as applicable) against the infringer to include demanding that a person cease using the name.
In setting up or operating a business it is suggested that you (i) conduct a search of the Register of Companies and Business Names at the Companies Office of Jamaica; and (ii) conduct a search of the Trade Mark Registry at the Jamaica Intellectual Property Office to ensure that your name is not already someone else’s name. Once the searches are cleared, it is highly recommended that you immediately register your name to afford your business the protection it deserves. For I am sure that many would want to protect their “spotless reputation” which stands behind the name of their business.
Shaniel May Brown is an Associate at Myers, Fletcher & Gordon and is a member of the firm’s Commercial Department. Shaniel may be contacted via email@example.com or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.