How to tackle ‘Coke Cola’ style copycat branding

When a firm thinks it can get away with calling itself Coke Cola Ltd then no one is safe from the copycat branders. Thankfully, the law has provided a new streamlined way for businesses to protect their trademarks, as Faizal Essat explains.

It may seem surprising that someone thought they could register a name so similar to one of the world’s leading brands and not feel the full force of the law coming down on them.

Until recently, however, Coca Cola might have found it difficult to deal with the problem because although a company could take action if a firm tried to use the same name, the scope for objecting to names that were merely similar was much more limited.

That has now changed because of provisions in the Companies Act 2006 which came into effect last October. Now companies can quite easily take action against opportunistic registrations of names which are the same or similar to their own.

Such opportunism includes cases where someone registers variations of the name of a well-known company in order to get that company to buy the names back. Or it could be that someone hears of a proposed merger between two firms and then registers several variations of the kind of name the new firm is likely to adopt.

The Company Names Tribunal was set up to adjudicate on such matters and the Coke Cola affair was its first case.

Coca Cola argued that the registration of Coke Cola Ltd was opportunistic and designed to take advantage of its famous brand name. The Tribunal moved quickly and ordered Coke Cola Ltd to change its name within one month. If it failed to do so then Tribunal would choose a name for it.

It was also ordered to pay Coca Cola’s application fee of £400 and £300 towards its costs.

The tribunal only deals with opportunistic registrations and there will still be times when companies may need to pursue infringements through the courts as before.

However, this new system provides companies with a quick and relatively cheap way to protect their brand. The application fee is only £400 and there are short time limits for the exchange of evidence so a case is unlikely to drag on incurring prohibitive costs.

Faizal Essat is a Legal Executive Advocate at Andersons Solicitors. He can be contacted on 0115 988 6707 or by emailing fessat@andersonssolicitors.co.uk.