Africa: The interplay between TMs and company names
Practically, there is no examination of the company names against existing trademarks in determining their registrability.
Consequently, companies are often registered with names that conflict with prior trademarks. The proprietors of trademarks are therefore responsible to monitor relevant publications with company registration notices and, where possible, act against the conflicting names.
The question that arises is, what recourse do proprietors of registered or well-known trademarks have, where companies are registered with a name which incorporates or conflicts with their trademark rights? If the companies in question are already trading, action based on trademark infringement and/or the tort of passing-off may be explored, provided all other requirements are met.
However, in some jurisdictions, as an alternative, there are simplified and cost-effective mechanisms which can be pursued and regulatory authorities which can be approached for recourse. This article briefly considers the recourse that is available in South Africa and Nigeria, respectively.
South Africa
The Companies Act 71, 2008, prohibits the registration of company names that are the same as or confusingly similar to, a registered trademark; a pending trademark application; or a well-known trademark, as defined by the Act. The proprietors of trademarks may file complaints against the registration of conflicting company names with the Companies Tribunal, an agency tasked with adjudicating such complaints.
