COMPANY NAMES VERSUS TRADEMARKS
The Companies (Amendment) Act, No. 28 of 2017 was assented to on 21 July 2017 with a commencement date of 16 August 2017. This Act was enacted to amend some of the provisions of the Companies Act No. 17 of 2015. These amendments relate to the provisions of section 58 of the Companies Act 2015.
Section 49 (1) (c) of the Companies Act, 2015 and Regulations 11 (h) and 12 (f) of the Companies (General) Regulations, 2015 provide that the Registrar of Companies (the Registrar), in determining whether a particular name is offensive, undesirable or contrary to the public interest, will consider if the name includes the name of a registered trademark, unless a document signed by the owner of the trademark and indicating consent to its use is provided.
Section 58 of the Companies Act, 2015 empowers the Registrar to direct an impugning company to change its name within a prescribed time from the issuance of the directive to change its name.
The Companies (Amendment) Act, 2017 has amended section 58 of the Companies Act, 2015 by adding new provisions to the effect that where a company does not comply with a notice issued under section 58 within fourteen days, the Registrar shall publish a notice in the Gazette to strike the name of the company off the Register of Companies (the Register).
The amendment to section 58 is also to the effect that as soon as the name of the company has been struck off the Register, the Registrar shall publish in the Gazette a notice indicating that the name of the company has been struck off the Register. Upon publication of the notice, the company is deemed to have been dissolved.
Please note that the striking off of a company from the Register does not affect the existing liabilities, if any, of every officer and member of the company. Such liabilities may be enforced as if the company had not been dissolved. Further, these provisions will not affect the powers of the court to liquidate a company whose name has been struck off the Register.
In our view, the amendment to 58 of the Companies Act, 2015 provides greater certainty and effectiveness in resolving cases of trademark infringement by any person who, not being the proprietor of the trademark or a registered user thereof, registers a company in a name that is similar to an existing and registered trade mark.
For further assistance please contact John Syekei, Partner and Head of Intellectual Property practice, or your relationship partner at Bowmans Kenya.