The new Companies Act, 2008, which came into effect May 12, established the Companies and Intellectual Property Commission.
The act is long and complex and I only intend to focus on the areas of the legislation that are closely associated with trade mark law, particularly the registration of company names and potential objections thereto.
At first blush the new Companies Act is different to the well-accepted and established concepts under the 1973 Companies Act of undesirable company names and names that are calculated to cause damage, as it refers to names that are the same as or confusingly similar to prior trade marks or company names.
This has caused practitioners some nervousness, as lawyers don’t like reinventing the wheel, preferring to rely on established authorities.
I was therefore surprised when, on scrutinising the provisions of the 2008 act, I found that while the wording is different, at least one important principle is basically the same.
Under the 1973 act a company name was objectionable if it was undesirable. The Registrar published a nonbinding directive setting out what he considered to be undesirable names, including a name that is likely to cause confusion with an existing trade mark. The courts, after pointing out that the word undesirable was not defined in the act, also found that a company name that is confusingly similar to a trade mark (or earlier company name or common law rights) was undesirable. In the circumstances the requirement in the 2008 act that a company name must not be confusingly similar to an earlier trade mark succinctly deals with the most common ground of undesirability that trade mark practitioners usually dealt with.