Two Companies - One Name

Either through coincidence or ulterior motives, it is possible for two companies to have the same name. How did this happen? It is quite possible that it is a simple coincidence where both companies just happen to choose the same name. It is also possible that the name was chosen for competitive purposes, for one company to mirror the success of another.

So, what happens when two companies have the same name? What if you pick a business name and later discover another business has already been using the same name? Are you in legal trouble? If someone else has taken your business name, can you file a trademark infringement claim?

First and foremost, it is important to understand that the answer is not simple and is dependent upon the situation, industry, period of use and more. Below you will find some possible answers to these questions. If you find yourself in this situation, it is best to reach out to a trademark agent or lawyer for advice.

‘Do not Confuse the Market’

To clear the air, it is possible for two companies to have the same name without violating the Trade-marks Act or any other laws. This is because Canada’s trademark laws follow the guideline of ‘do not confuse the market’. If the market or customers are not confused, then two companies can have the same name.

Geography and Industry

Geography and location of the companies play a big factor in deciding whether the market is confused or not. This is because the two companies, with the same name, may have a different market, and hence, there is no confusion.

The geography and industry decide the market.

For example, a company only operating in Ontario and a company only operating in Alberta can have the same name as their market is restricted by geography. This becomes more complex in cases where one party has a registered trademark.

Who was First?

Which business used the name first can be a vital factor in the case of a trademark dispute. By Canadian law, trademark rights are established by the business that utilized the name first, and not necessarily, by which company filed for trademark protection first.

If the other company used the name first and there is a dispute, your company could very well lose the right to use the name.

Who Registered First?

Ideally, when a business name is being trademarked, thorough research is conducted to ensure that no other business has the same name. However, it can happen that the search is not done thoroughly and the business name is trademarked, in spite of another business using the name. Even with a thorough and properly performed search there is no guarantee that others have not used the trademark or a similarly confusing trademark that simply did not turn up in the search. Such scenarios lead to complicated trademark disputes.

Allegation of Corporate Name Confusion

The Allegation of Corporate Name is a process that you can initiate in case there is a confusion between trademark names and the involved parties are corporations. There must be clear confusion between the names. A Statement of Objection is submitted to the Corporations Canada. The accused party responds to the Statement of Objection, the accuser party replies. The Corporations Canada makes a final decision on the dispute.

Trademark Infringement Case

If you choose the name, use it and register it before the other company, then you stand a good chance of winning a trademark infringement case. It is highly recommended that you reach out to a laywer with experience in trademark infringement. You need to send an infringement claim to the other party.

This article is only a starting point for such cases where two companies have the same name. Before you proceed to take any action, consult a trademark lawyer or agent to ensure you are making a well informed decision.