Decision

Decision on AKSA London Ltd

Updated 4 July 2022

Companies Act 2006

In the matter of application No. 3208 by AXA for a change to the company name of AKSA LONDON LTD, company registration no. 12618163

1. Company no. 12618163 (“the primary respondent”) was incorporated on 22 May 2020 with the name AKSA LONDON LTD. On the Companies House website the company’s “Nature of business (SIC)” is recorded as: “Other retail sale not in stores, stalls or markets.” The company’s sole director is Miss Aksa Sarfaraz.

2. On 25 June 2020, AXA (“the applicant), filed an application to this Tribunal under section 69 of the Companies Act 2006 (“the Act”).

3. Section 69 of the Act states:

(1) A person (“the applicant”) may object to a company’s registered name on the ground―

(a) that it is the same as a name associated with the applicant in which he has goodwill, or

(b) that it is sufficiently similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the applicant.

(2) The objection must be made by application to a company names adjudicator (see section 70).

(3) The company concerned shall be the primary respondent to the application.

Any of its members or directors may be joined as respondents.

(4) If the ground specified in subsection (1)(a) or (b) is established, it is for the respondents to show―

(a) that the name was registered before the commencement of the activities on which the applicant relies to show goodwill; or

(b) that the company―

(i) is operating under the name, or

(ii) is proposing to do so and has incurred substantial start-up costs in preparation, or

(iii) was formerly operating under the name and is now dormant; or

(c) that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business; or

(d) that the name was adopted in good faith; or

(e) that the interests of the applicant are not adversely affected to any significant extent.

If none of these is shown, the objection shall be upheld.

(5) If the facts mentioned in subsection 4(a), (b) or (c) are established, the objection shall nevertheless be upheld if the applicant shows that the main purpose of the respondents (or any of them) in registering the name was to obtain money (or other consideration) from the applicant or prevent him from registering the name.

(6) If the objection is not upheld under subsection (4) or (5), it shall be dismissed.

(7) In this section “goodwill” includes reputation of any description.

4. In response to question 10 on the Form CNA1 which reads, “What is the name associated with you which has caused you to make this application?”, the applicant states “AXA”.

5. In relation to “goodwill or reputation” (question 11 on the Form CNA1), it is stated:

AXA is one of the world’s largest and most renowned insurance, life insurance, investment, finance and asset management companies with operations in 57 countries, over 160,000 employees and 108 million customers. AXA has been trading continuously under the AXA trade mark in the UK since 1985 investing significantly in the promotion of its services under the AXA mark through advertising and PR campaigns over the decades including prime time television advertising. The AXA trade mark has acquired a substantial reputation and goodwill in the UK for inter alia investment, insurance, life insurance, finance and asset management services. Such is the reputation of AXA in the UK that the name and trade mark AXA has become synonymous with AXA’s business by the UK public.

6. It is stated that the company name is objected to because:

The Applicant objects to the registration of AKSA LONDON LTD because it has acquired a massive reputation and goodwill in the name and trade mark AXA and has invested substantial funds in the promotion of its name and protection of its AXA brand. Such is the Applicant’s reputation in the AXA name in relation to insurance, life insurance, investment, finance, wealth and asset management that it is inevitable the registration of a name which contains the word AKSA which is phonetically identical and visually highly similar to AXA, was made to take advantage of the said reputation. The word LONDON does not help to distinguish the names but will merely be perceived as a London branch of AXA’s business. Further, AXA has offices in London.

7. The applicant indicates that it did not contact the company prior to making its application. It also indicates it is not claiming costs.

The defence

8. On 27 October 2020, the primary respondent filed a notice of defence (completed by Aksa Sarfaraz). In that defence, the primary respondent indicated it was relying upon defences under sections 69(4)(b) and (c) of the Act. On 12 November 2020, the Tribunal wrote to the primary respondent stating:

There appears to be a discrepancy between the information the respondent has provided to support their defence and the actual defences that have been ticked, as it is noted that the declaration has been made by Aksa Sarfaraz who states that he has used his personal name to create the company name.

9. On 12 December 2020, the primary respondent filed an amended Form CNA2 in which the defence based upon section 69(4)(b) of the Act was deleted. As this amended Form CNA2 contains the only comments we have from the primary respondent, they are reproduced below:

we deny that we have tried to take the goodwill of AXA because AXA COMPANY trades in INSURANCE, LIFE INSURANCE, INVESTMENT, FINANCE, WEALTH AND ASSET MANAGEMENT, but my company AKSA LONDON LIMITED will trade in household goods. please note its completely 2 different trades. AXA and AKSA has big difference too either in pronounce or writing. my company has word London in it that is why it’s unique and completly different from AXA AS applicant has admitted already.

And:

my company name “aksa London ltd” is unique name and has no similarities between Axa either in name or trade. I took aksa word Turkish language which means water drops, there are mosques in turkey and Israel with name AKSA/AQSA.

because I have settled in uk and London is my capital as well, that is why I chose name aksa London.

my company aksa London ltd is not that only registered company which start with word “AKSA”. I have mentioned more companies names below which registered in England and Wales.

1. Aksa limited – no. 08742497
   
2. Aksa auto electrical services ltd – no. 12008006
   
3. Aksa catering ltd – no. 1193887e
   

and the list goes on, its exactly same first 4 letters as my company name.

10. In its amended Notice of Defence, the primary respondent is now relying upon a single defence based upon section 69(4)(c) of the Act. It further indicates that it is not claiming costs.

11. In these proceedings, the applicant is represented by Keltie LLP, the primary respondent represents itself. Only the applicant filed evidence. The parties were asked if they wanted a decision to be made following a hearing or from the papers. Although neither party requested a hearing, the applicant elected to file written submissions in lieu of attendance. We shall refer to these submissions, as necessary, below.

The applicant’s evidence

12. This consists of a witness statement, dated 7 April 2021, from Amber Wilkinson; Ms Wilkinson is the director of Strategy, Brand and Communications at AXA UK PLC, a position she has held for two years. Ms Wilkinson explains that AXA UK PLC is owned and controlled by the applicant.

13. Ms Wilkinson states that the name AXA was adopted in 1985 and:

5… today is one of the world’s leading insurance and asset management companies with earnings of €97 billion with 153,000 employees, operations in 42 countries and 105 million clients.

14. The AXA name and trade mark has, she states, been used globally including throughout the UK since 1985. In the UK, it employs 10,000 people and services 10 million customers through its insurance and healthcare operations, AXA Insurance and AXA PPP Healthcare.

15. Exhibit AW1 consists of a witness statement, dated 20 July 2017, from Darrell Sansom and nine accompanying exhibits. At the time of his statement, Mr Sansom was the Chief Marketing Officer for AXA UK and Ireland. Ms Wilkinson notes that this was filed as evidence in company name proceedings 1340 and explains that:

7… Since this demonstrates reputation and goodwill in the AXA name in the UK up to 2016 my witness statement will prove that the goodwill and reputation in AXA in the UK continues to exist and existed on 22 May 2020 when AKSA LONDON LTD was registered…

16. We note that the Adjudicators in application 1340 stated (with footnotes omitted):

10… Mr Sansom’s evidence goes to AXA’s reputation, which is for financial services, mainly insurance. The name AXA has been used globally since 1985, including in the UK. The applicant employs 10k people in the UK and has 10m customers here. It is one of the biggest insurers in the UK providing personal and commercial insurance and controlling nearly £2.5 billion in premiums. An article published in The Sunday Times on 21st May 2017 described Axa as an “insurance giant”. In 2016, Interbrand, a brand strategy and design consultancy, ranked AXA 1st amongst global insurance brands for the eighth year running as well as being one of the top three financial services brands. In support of the applicant’s claim that AXA has a substantial reputation in the UK, Mr Sansom points out that all the hits on the first 10 pages from the results of a search for AXA conducted on Google (in July 2017) related to the applicant.

11. The AXA trade mark is generally used in a logo form, which looks like this.

12. The AXA name was also used in combination with (mostly) descriptive secondary elements prior to the relevant date. For example, AXA PPP Healthcare, AXA Insurance, AXA Wealth, and AXA Self Investor.

13. The applicant advertised business insurance on its axa.co.uk website prior to the relevant date. And by no later than 20th July 2017…the applicant’s UK website provided details of more specific business insurance options, including…”.

17. We further note the Adjudicators concluded:

24. The applicant claims to have a very substantial reputation in the UK under the name AXA in relation to insurance, finance, wealth and asset management. In this connection, the applicant points to the length and scale of its business in the UK and the recognition and high ranking of the brand by third parties, such as Interbrand.

25. We find that AXA has a substantial reputation and goodwill in the UK. This is mainly as an insurance business, but also extends to some other financial services, such as wealth and asset management. It is true that the name is usually used in the logo form shown at paragraph 11 above. However, the letters AXA are clearly visible in that logo. AXA is how customers would vocalise the brand. The name AXA is also used in word form on the applicant’s website. And others use the name to identify the applicant without having to use the logo form. For example, The Sunday Times described “Axa” as an insurance giant. Admittedly this was in 2017, but given the length of the applicant’s business in the UK there is no reason to doubt that the meaning of AXA would have been any different at the relevant date of incorporation of the respondent.

We shall return to these conclusions later in this decision.

18. Exhibits AW2 and AW3 consist of pages obtained from www.axa.co.uk and www.axa.com respectively. The pages indicate that they were printed on 7 April 2021. The pages provided contain images of the AXA trade mark in the logo form shown above and also in the “word form” i.e. AXA. Exhibit AW2 contains references to a wide range of insurances services. Exhibit AW3 is to a similar effect, although asset management is also mentioned.

19. Exhibits AW4 to AW6 consist of press releases issued on 25 February 2021, 20 February 2020 and 21 February 2019 respectively, taken from www.axa.com. The press releases announce the “Full Year Earnings” for the applicant in 2020, 2019 and 2018 respectively. The press releases bear the AXA logo and word form and indicate that in relation to the UK & Ireland, in the periods mentioned, the revenue figure never fell below €5.1 billion.

20. Ms Wilkinson states that:

14. AXA invests significantly in advertising and promotional activities in the UK. This includes television advertising on national television channels, advertisements in national newspapers, advertisements in trade publications, poster campaigns in cities throughout the UK, sponsorship and digital advertising.”

21. She further states that annual advertising in the UK in the years 2018-2020 amounted to £42.9m. Exhibit AW7 consists of examples of such advertising between 2015 and 2020, with Ms Wilkinson noting:

16… This includes details of television advertising on the ITV networks, Channel 4, C4 Digital and Sky and Five Networks; national newspaper advertisements in the Financial Times, The Times, Daily Telegraph, The Guardian; business publications including City Wire, Corporate Advisors, Portfolio Advisor, Financial Advisor, Investment Advisor, New Model Advisor: advertisements in non-business publications including The Metro, Good Food magazine; poster campaigns featured on the roadside and rail sites across the UK; digital display banners broadcast across multiple website and digital advertisements placed on ebay.co.uk, streetmap.co. uk, lycos.co.uk, Facebook.

We note that either the AXA logo or the logo and word form or word form alone appear in the examples provided.

22. Exhibit AW8 consist of a page from liverpoolfc.com. dated 3 May 2019. It states:

Liverpool FC has today announced that AXA, the world’s leading insurance brand, will become a principal partner and the club’s new official training kit partner from the 2019-20 season.

23. The pages provided contain the following image:

24. Exhibit AW9 consists of pages obtained from Interbrand.com, which indicates that in the years 2018, 2019 and 2020, AXA was ranked 47th, 46th and 48th respectively in the Interbrand Report of Best Global Brands.

25. Exhibit AW10 consists of a range of articles provided to demonstrate that:

19. London has for hundreds of years been known as the centre of financial and insurance services in Europe…”

26. Although we have read these articles, it is not necessary for us to summarise them here.

27. That concludes our summary of the evidence filed to the extent we consider necessary.

Decision

28. If the primary respondent defends the application, as here, the applicant must establish that it has goodwill or reputation in relation to a name that is the same, or sufficiently similar, to that of the primary respondent’s name suggesting a connection between the applicant and the primary respondent. If this burden is fulfilled, it is then necessary to consider if the primary respondent can rely upon defences under section 69(4) of the Act.

Does the applicant have the necessary goodwill/reputation?

29. The relevant date is the date of incorporation of the primary respondent which, in this case, is 22 May 2020. Section 69(7) of the Act defines goodwill as a “reputation of any description”. Consequently, in the terms of the Act it is not limited to Lord Macnaghten’s classic definition in IRC v Muller & Co’s Margarine Ltd [1901] AC 217:

What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start.

30. Earlier in this decision, we noted the conclusions reached by the Adjudicators in application no. 1340. We further note that that application related to a challenged company which was incorporated in November 2016. Not only has the primary respondent not denied the applicant has the reputation it claims in these proceedings, in its Form CNA2, it specifically states:

we deny that we have tried to take the goodwill of AXA because AXA COMPANY trades in INSURANCE, LIFE INSURANCE, INVESTMENT, FINANCE, WEALTH AND ASSET MANAGEMENT…

31. On the basis of the evidence provided in the witness statements of Mr Sansom and Ms Wilkinson, we are satisfied that at the relevant date in these proceedings, the applicant’s business had the necessary goodwill in the names and services identified by the Adjudicators in paragraph 25 of their decision in application no. 1340.

Similarity of names

32. The other initial burden facing the applicant is that the company name is sufficiently similar to AXA to suggest a connection between the company and the applicant. The company’s name is “AKSA LONDON LTD.” In its submissions, the applicant states:

As a company designation is a necessity for a registered company, the “LIMITED” element of the primary respondent’s name does not have a bearing in the determination of similarity of the names as it simply indicates the corporate status of the company. The word “LIMITED” should therefore be ignored for the purpose of comparison. Further, the presence of London has little or no capacity to distinguish between distinctive trading names.

The word LONDON within the Respondent’s name is merely a reference to the city of London. London has for hundreds of years been recognised as the centre of financial and insurance services in Europe…

Since the Applicant’s reputation in AXA relates to the insurance and financial sector, there is a strong connection between the word LONDON and the Applicant. Further, the address for AXA UK PLC is Old Broad Street, London. Thus, the users of AXA’s financial and insurance services would not find the use of AXA LONDON as a name to be incongruous or contradictory…

…the power of the word LONDON is significantly reduced in the Respondent’s name to counter the impression of a connection with the AXA insurance company. The word LONDON is not strong enough to neutralise the effects of the distinctive word AXA and, in fact, because of the link between London and AXA’s activities, it serves to emphasise the association.

33. As we noted above, the applicant uses the word AXA in both logo and word formats. The applicant submits that the word “LTD” in the primary respondent’s name merely indicates the legal status of the entity concerned. We agree . As a consequence, it is non-distinctive and, therefore, does nothing to distinguish between the primary respondent’s name and the name relied upon by the applicant. As the word “LONDON” is geographical in nature, that alone is, in our view, sufficient to render it insufficient to distinguish between the competing names. However, as the applicant relies upon goodwill in a range of financial services and as we agree that “LONDON” is very well-known as a financial centre, that conclusion is even stronger. In short, the word “AKSA” is the only distinctive part of the primary respondent’s name.

34. In its written submissions, the applicant submits that “AKSA” and “AXA” are visually highly similar, aurally identical and neither word will form a concept in the mind of the public.

35. Notwithstanding that both the word “AXA” and “AKSA” begin and end with the letter “A”, in such short words i.e. three letters as opposed to four, even a one letter difference can be significant. Consequently, even if one compares the word “AKSA” with the word only form “AXA”, in our view, there is only a low degree of visual similarity.

36. In relation to aural similarity, the applicant states:

The word AKSA is phonetically identical to AXA. The words both consist of two syllables. The only way to pronounce the word AKSA is to pronounce the letters ’AKS’ and ‘AX’ as ‘axe’ so that with the additional letter ‘A’ the words are identical’. There is in fact no way to distinguish the words AKSA and AXA phonetically.

37. Insofar as the words “AKSA” and “AXA” are concerned, we agree with the applicant’s submissions. However, even though in our view highly unlikely, even if the totality of the primary respondent’s name was verbalised, given our comments above about the words “LONDON” and “LTD” and as the word “AKSA” would be verbalised first, it would still result in a high degree of aural similarity.

38. In its submissions, the applicant states:

Conceptually, neither word has a meaning in English and is unlikely to form any concrete concept in the mind of the public. Therefore, the names cannot be distinguished from a conceptual perspective.

39. Insofar as the words “AXA” and “AKSA” are concerned, we agree. Although the words “LONDON” and “LTD” will convey concrete concepts to the public, as those concepts are descriptive/non-distinctive, it does not assist the primary respondent.

40. In the course of trade, the public may encounter a company’s name in printed format on, for example, its signage on physical premises, on its website, in its promotional material and on company materials such as order forms and bills. These are typical examples of when the visual aspect of name of a company will be important. However, the public will also refer to a company’s name verbally, when, for example, making enquiries or in word-of-mouth recommendations. It is, therefore, clear, that a company’s name is intended to appeal to both the eye and the ear. Proceeding on that basis and notwithstanding what we regard as the low degree of visual similarity, the at least high degree of aural similarity (and, more likely, aural identity) combined with the lack of any concept which may assist the public in distinguishing between the competing names is, in our view, likely to lead the public to make a connection between the competing names. We note that in its submissions, the applicant submits that it has “made out a case under section 69(1)(b) of the Act”; we agree

41. We should make it clear that in reaching the above conclusion we have not overlooked the primary respondent’s following comments (i) it will trade in household goods, (ii) that aksa is a word in the Turkish language meaning “water drops”, (iii) there are mosques in Turkey and Israel with, inter alia, the name “AKSA”, and (iv) there are other companies registered which begin with the word “AKSA”.

42. Although the primary respondent indicates it will trade in household goods, that is not decisive, because it is not restricted to trading in this field (or from selling the company to someone who may trade in another field, including the identical field in which the applicant operates and has goodwill). As this is a dispute in the UK, the fact that the word “AKSA” may have the meaning in the Turkish language the primary respondent suggests or may be the name of mosques in the countries identified is also not relevant. Finally, the fact that other companies may contain “AKSA” as the first word in their name is also not relevant. Such companies may, for example, no longer be extant, may trade in areas which do not concern the applicant or may not be trading at all.

43. As the ground specified in subsection 69(1)(b) is established, the onus switches to the primary respondent to establish whether it can rely on the single defence pleaded in its amended Notice of defence.

Defence

44. The primary respondent is relying upon the following:

Section 69(4)(c) - that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business;

45. In its submission the applicant states:

No further reference has been made to this defence in the CN2 or otherwise. The defence claim consists merely of a bare assertion which has not been supported by any corroborative evidence. In particular, no evidence has been submitted to support the claim that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business. This defence applies only where the company name was registered by a company formation agent and is available for sale on the usual terms applicable to shelf companies.

However, it is evident from Companies House and supported by the CN2 that Aksa London was incorporated by Aksa Sarfaraz and that it was not incorporated by a company formation business or that the company is available for sale to the applicant…

46. As the applicant points out, section 69(4)(c) of the Act relates to companies that were registered in the ordinary course of a company formation business being available for sale to the applicant on the standard terms of that business. There is no evidence to suggest that is the case in these proceedings. As a consequence, the defence based upon section 69(4)(c) fails and is dismissed accordingly.

Outcome

47. As we have dismissed the defence, the application succeeds.

48. Therefore, in accordance with section 73(1) of the Act, we make the following order:

(a) AKSA LONDON LTD shall change its name within one month of the date of this order to one that is not an offending name;

(b) AKSA LONDON LTD shall:

(i) take such steps as are within its power to make, or facilitate the making, of that change;

(ii) not to cause or permit any steps to be taken calculated to result in another company being registered with a name that is an offending name.

49. In accordance with Section 73(3) of the Act, this order may be enforced in the same way as an order of the High Court or, in Scotland, the Court of Session.

50. In any event, if no such change is made within one month of the date of this order, we will determine a new company name as per section 73(4) of the Act and will give notice of that change under section 73(5) of the Act.

51. The primary respondent has a legal duty under Section 73(1)(b)(ii) of the Act not to cause or permit any steps to be taken calculated to result in another company being registered with an offending name; this includes the current company.

Costs

52. As the applicant indicated that it is not claiming its costs, we make no award in this regard.

53. Any notice of appeal against this decision must be given within one month of the date of this decision. Appeal is to the High Court in England, Wales and Northern Ireland and to the Court of Session in Scotland.

54. The company adjudicator must be advised if an appeal is lodged, so that implementation of the order is suspended.

Dated 16 February 2022

Christopher Bowen
Mark Bryant
Beverley Hedley
Company Names
Adjudicator