Decision

Decision on Huluhulu Ltd

Published 15 March 2022

Companies Act 2006

In the matter of application No. 3243 by Hulu LLC for a change to the company name of HULUHULU LTD, a company incorporated under number 12496472

Background, Claims and Defences

1. HULUHULU LTD was incorporated on 4 March 2020 and registered at Companies House under Company No. 12496472.

2. Hulu LLC (hereafter ‘the Applicant’), filed a Form CNA 1 (dated 5 August 2020) in application to the Company Names Tribunal for an Order under section 69 of the Companies Act 2006 (‘the Act’) to change the company name of HULUHULU LTD. Three adjudicators comprise the tribunal panel for the decision in this matter.

3. In these proceedings HULUHULU LTD is “the Primary Respondent” (as well as “the contested Company Name”). Stefan Wawrzyniak is the sole director/shareholder of the Primary Respondent and in the Form CNA1 the Applicant requested that he be joined to the proceedings. Mr Wawrzyniak is duly the Co-Respondent in these proceedings and a letter dated 10 September 2020 from the Tribunal confirmed the potential legal implications for all respondents under section 73(1) of the Act.

4. Before making this application for a name change, the Applicant’s legal advisors (Allen & Overy LLP) had written to Mr Wawrzyniak in his capacity as director of the Primary Respondent. Their letter, dated 22 June 2020, outlined the Applicant’s interests in the word HULU not only as the core of its company name, but also under registered EU trade mark rights and in goodwill said to have been built up through trade use in the UK. It highlighted the powers of the Tribunal and asked that the name of the Primary Respondent be changed to one that is not similar to HULU. A copy of that letter (and its enclosures) was included as an annex to the filed Form CNA 1. On 24 June 2020, Mr Wawrzyniak spoke to the Applicant’s legal advisors by telephone, but refused to change his company name.

5. The Form CNA 1 reiterated the Applicant’s objections, referring to its EU and UK trade mark rights that contain or consist of the word HULU, some dating back to 2007, and claims that since its establishment in 2007 the Applicant has developed an extensive reputation and goodwill worldwide, including in the United Kingdom, in the name HULU in relation to entertainment production and streaming on the Internet. The Applicant has produced a large amount of original content under the Hulu name since 2011, which has been successful across the globe, including in the United Kingdom. It highlights, for example, The Handmaid’s Tale (2017 – 2020), now in its fourth season and which won the British Academy Television Award for Best International Programme in 2018.

6. The Form CNA 1 refers to the telephone call between Allen & Overy and Mr Wawrzyniak wherein he indicated the intention to use the contested Company Name for “an internet-based business.” In view of the Applicant’s claimed reputation and goodwill based on the name HULU, in respect of “internet and entertainment services”, the similarity with “HULUHULU” (where, the Applicant notes, the word is repeated) will lead consumers to “think of” or “call to mind” “HULU, which is in itself a highly distinctive name” and the contested Company Name will mislead consumers by suggesting that there is a connection between the Applicant and the Primary Respondent.

7. The Applicant requests that the Tribunal take the following actions:

• to make an order under section 73 of the Act requiring the Primary Respondent, by a specified date, to change its name to one that is not an offending name;
  
• requiring the Respondents to take all such steps as are within their power to make, or facilitate the making of, that change and 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;
  
• if the contested Company Name is not duly changed that a new name for the Primary Respondent be determined by the Tribunal;
  
• that the Applicant be awarded its costs jointly and severally against the respondent company and Mr Wawrzyniak

8. Between 15 September 2020 and 17 November 2020, Mr Wawrzyniak initiated an exchange of correspondence involving Companies House and the Tribunal (at the Intellectual Property Office), in which he indicated that he felt aggrieved to face the challenge to his company name. Mr Wawrzyniak based his complaint in part on his observation that the Applicant is not based in the United Kingdom. The Tribunal casework team provided guidance on some of the points raised by Mr Wawrzyniak, including clarification that it is open to a company to apply under section 69 of the Act to change a company name in circumstances where an applicant is able to claim goodwill in the UK. The Act does not restrict applications to companies registered in the UK, because overseas companies frequently trade in the UK and have relevant goodwill in the UK.

9. Mr Wawrzyniak filed a Notice of Defence (Form CNA 2), signed and dated 8 October 2020, denying all of the allegations in the Applicant’s statement of grounds. The response to Question 3 in the Form CNA 2 indicated reliance upon only one defence, namely that the interests of the applicant are not adversely affected to any significant extent (section 69(4)(e) of the Act). However, the Form CNA 2 was supported by a narrative account in defence of maintaining the company name of the Primary Respondent. The content of that defence statement indicated that the Respondents intended to rely on the additional defence that the contested Company Name was adopted in good faith (section 69(4)(d) of the Act). Following clarification of the position, the Tribunal confirmed (by its letter 14 October 2021) the admission of the defence on that revised basis.

10. I note the following claimed points from the Form CNA 2 defence statement:

(i) Mr Wawrzyniak states that he followed “all steps correctly and in good faith, the trade mark and company name is different, unique and means something”;

(ii) He states that it is hard to find a unique company name which actually means something. He states that huluhulu means “hairy”… “like the bear, Godzilla or me” and that it is adopted from the name of a Hawaiian volcanic hill called Pu’u Huluhulu (meaning “hairy hill”). He provides an extract from Wikipedia and other internet links.

(iii) He had “wanted to find a compromise”, but that was rejected. He is referring to reduction of the scope of his trade mark application - which is a separate matter from the company name objection – but we note that Mr Wawrzyniak states that he had offered to “withdraw all trade mark descriptions related to an online television, online tv streaming and television”. Since his offer was rejected, Mr Wawrzyniak states that he maintains his trade mark application unchanged.

(iv) He refers to Hulu LLC not having a branch in the UK, nor being registered as a company in the UK, not paying tax here, nor even having a licence to broadcast commercial television in the UK. In line with the clarification we mentioned previously, these factors are not required to pursue an application under section 69 of the Act.

(v) He states that the Applicant does “not seem to have good will.”

(vi) Having received the challenge to his company name, he checked the UK register of company names and found one “Hulu” company present in the UK (Hulu Limited) but that company is not related to the Applicant.

(vii) He states there are lots of Hulu companies all around the world, but “only one Huluhulu Ltd is called Huluhulu.”

(viii) Mr Wawrzyniak sets out the steps that he took before he registered his company name (and his trade mark application): (a) he carried out research that revealed no other organisation with the name Huluhulu; (b) the required initial availability check indicated that Huluhulu was available to register as a limited company in the UK (c) he researched the national and international trade mark databases to check that Huluhulu was not already a registered trade mark including the four classes “that will be most important for Huluhulu activity” – namely 35, 36, 38 and 42.

(ix) The contested Company Name is registered in four classes of standard industrial classification of economic activities (SIC), namely:
63120 - Web portals;
64999 - Financial intermediation not elsewhere classified (E-money)
64191 – Banks
66120 – Security and commodity contracts dealing activities.

(x) He states that the Primary Respondent owns web domains for the UK, China, Russia, Brazil, Japan and Mexico – huluhulu.co.uk; huluhulu.mx etc - which the Co-Respondent states will reach almost half of the internet users around the world.

(xi) Mr Wawrzyniak acknowledges the similarity of the shared syllables hu and lu, but states that they are easily distinguishable.

• he states that Huluhulu will have nothing to do with online television. A six-page document attached to the counterstatement sets out the business objectives overview for Huluhulu which aims “to create a set of Internet platforms which combine in one place the most useful online services”. The nature and purpose of that document is not clear – for example whether it is a business plan for investors. It gives an account of twelve planned platforms, with seemingly entirely disparate purposes – including a general auction site, a site for subscribers to sell up to one car per month, a dating platform, a property sale and rental platform, a holiday site, an employment agency and an online payment platform
  
• he states that he is “more than convinced that Huluhulu will quickly become the most desirable and for sure most distinctive multiplatform around the world.”
  
• “The project is huge and will operate in all countries and in all official languages.”

11. The Applicant remains professionally represented by Allen & Overy LLP. The Respondents are not professionally represented.

12. The Applicant filed evidence in the form of a witness statement by Karen Tu Huoth dated 10 February 2021, with 17 exhibits. Ms Huoth is a Vice-President at the Applicant, responsible for its litigation and intellectual property. She seeks to provide evidence of the Applicant’s relevant goodwill associated with the name Hulu at the time of the Respondent’s registration of the contested Company Name.

13. The Respondent filed evidence comprising a witness statement by Mr Wawrzyniak dated 30 May 2021, with 16 exhibits. By a letter dated 8 September 2021, the Applicant’s representatives sought to strike out all or part of what was filed by the Respondent on the basis that much of it involved non-relevant topics and/or submissions and opinions that are not to be given the status of evidence. The Tribunal nonetheless accepted into the proceedings what Mr Wawrzyniak filed, much of which involved reiteration of points from the counterstatement in line with the summary above. In this decision we (the Adjudicators) have assessed any evidence as such according to its merits.

14. Parties were asked if they wished for a decision to be made following a hearing or from the papers. Neither side chose to be heard. Submissions in lieu of a hearing were filed on behalf of the Applicant. The submissions included copies of earlier decisions that were said to support the Applicant’s arguments, particularly relating to the viability of the two defences invoked by the Respondents. Mr Wawrzyniak objected to what was filed, but the Tribunal clarified that, to the extent that the Applicant’s submissions included evidence, it was only by reference to material previously filed by the Applicant, and that there is no objection to references to earlier published decisions. Nonetheless, each decision falls to be determined on its own facts in accordance with the relevant legal principles and we make this decision after having carefully read all the papers filed by both parties.

Decision

15. 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 those 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.

Goodwill

16. The Applicant’s objection under section 69(1)(b) requires that we determine whether the contested Company Name is sufficiently similar to a name associated with the Applicant in which it has goodwill, such that use of the contested Company Name in the UK would be likely to mislead by suggesting a connection between the company and the Applicant. The name in respect of which the Applicant claims goodwill is HULU. Before considering whether that name is similar to the contested Company Name, and considering whether use of the latter would misleadingly suggest a connection between the parties, it is first necessary to determine whether the name HULU has relevant goodwill with which the Applicant is associated.

17. The relevant date for the purpose of proving goodwill is the date of adoption of the company name, 4 March 2020.

18. In respect of goodwill, the tribunal routinely looks for guidance to case law developed in trade mark proceedings and in that context, the concept of goodwill was explained in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at 223 as follows:

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.

19. However, section 69(7) of the Act defines goodwill in the context of company name objections to mean “reputation of any description.” This meaning is wider than the traditional definition of goodwill, and encompasses reputation at large and does not require the presence of customers in the jurisdiction (which is to say, customers in the UK). That said, any goodwill or reputation that may be demonstrated by the evidence is to be assessed in relation to its potential impact in the UK.

20. This is significant in terms of the Applicant being a company situated overseas (as per the points raised by Mr Wawrzyniak). The evidence of Ms Huoth, at paragraph 6 of her witness statement, is that it is the largest US premium video streaming service offering live and on-demand television programming and movies, with around 39 million subscribers in the US.

21. Hulu was founded in 2007 as a joint venture between Fox and NBC to provide Internet users with a legitimate method to access and view premium video content, primarily in the form of television programmes and feature films, on their desktop computers, and portable Internet-capable devices such as laptop computers, tablet computers and mobile phones. Hulu’s primary investors and/or content providers include The Walt Disney Company, MGM, Paramount, MTV Networks, Sony Pictures Television and Warner Brothers.

22. Ms Huoth explains the derivation of the Applicant’s name – HULU - from Mandarin terms signifying both a holder of precious things (from a hollowed gourd) and “an interactive recording”.

23. HULU is used primarily in connection with services in the nature of a website (ww.hulu.com), but more recently has offered its content to subscribers via downloadable software applications on various streaming platforms, such as Apple TV, Chromecast, Amazon Firestick or direct to mobile phones and other Internet-enabled devices. Exhibit KTH-03 shows that in 2021 hulu.com was among the top 200 most visited websites globally. Exhibit KTH-11 shows various commercial and media awards and recognition for its website as early on as 2008 (“Website of the Year” by Associated Press). Due to copyright restrictions and Hulu’s current contractual arrangements with its content providers, the majority of the Hulu website’s premium video content remains inaccessible to website visitors located outside the United States. Ms Huoth states that nonetheless, substantial portions of the Hulu website itself and some video content are accessible outside the US including users in the United Kingdom. Exhibit KTH-04 displays Google Analytics showing that between January and May 2017, approaching 2 million visits to the site had originated from the UK. While we note this evidence, those UK visits are approximately three years before the relevant date and it is difficult to discern the context of the 2 million visits from UK, since most of the website’s content is not available outside the US.

24. The evidence shows strong reputation and goodwill in the US associated with the name and business offerings in that territory, where the Applicant is clearly a leading provider of streaming services. However, as we have noted, any such reputation must be assessed in the context of the potential impact of use of a similar name in the UK. In that regard, we do note the entertainment content that is produced or co-produced by Hulu that is available on terrestrial television and other online channels in the United Kingdom, for example the television series The Handmaid’s Tale was broadcast on Channel 4 and the series Normal People streamed on the BBC.

25. We also note that Hulu’s rapidly expanding commercial success has drawn considerable media attention. Exhibit KTH-05 includes some examples from 2015 onwards from publications with international circulation. An article from the Financial Times in May 2019 is headed “Hulu closes gap with Netflix in the US”, with another article from The New York Times highlighting in its sub-header that “Hulu, now controlled by Disney, has something Netflix doesn’t: ads. And they are worth a lot.” Ms Huoth reports that advertising revenue in 2018 was approximately US$ 1.5 billion, involving companies such as McDonald’s, Nissan, Visa, American Express, and Unilever. Exhibit KTH-15 includes an article from August 2015 in The Wall Street Journal reporting that Time Warner had acquired a 10% stake in Hulu for over US$ 500 million, thus valuing Hulu at over US $5 billion at that time.

26. Exhibit KTH-12 indicates the extent to which the UK public may have encountered the Applicant’s name through its featuring in numerous UK media publications from 2009 – 2020 reviewing Hulu-produced television programmes, or otherwise highlighting the success of the business. For instance, an article in The Guardian on 16 May 2019 named Hulu as behind George Clooney’s television adaptation of Catch-22. And an article from The Telegraph in November 2016, referred to Hulu as one of the “video-on-demand giants”, which “hasn’t just changed the way we consume television: it’s changed the way it is made.”

27. The Applicant is US-based and US-focused, but looking at matters in the round, since “goodwill” in the context of section 69 of the Act “includes reputation of any description”, we are satisfied that the name HULU, relied on by the Applicant, is one that has a relevant reputation for purpose of section 69. This finding takes into account the evidence of media attention in the UK Press and in international publications with UK readership, dating back years before the registration of the contested Company Name, highlighting Hulu’s rapid, multi-billion-dollar commercial success, and the evidence its various productions shown and well received in the UK, leading to a reputation among business affiliates, Internet users, and the general public. The large number of UK visitors to its website, which we note coincides with the showing of The Handmaid’s Tale in the UK in 2017, also illustrates how the Applicant’s reputation has extended into the UK.

Similarity of the contested name

28. We turn therefore to consider whether there is sufficient similarity between the names such that use of the contested name is likely misleadingly to suggest a connection between the parties. The name associated with the Applicant in which it has goodwill (for the purposes of section 69) is HULU; the contested Company Name is HULUHULU LTD.

29. The Applicant’s submissions include the following points:

i. The contested Company Name is simply a doubling of the name associated with the Applicant. The presence of “LTD” in the contested Company Name is to be ignored during the comparison as a company designation is legally required for a company incorporated in the United Kingdom (other than in certain excepted circumstances), and is therefore purely descriptive.

ii. Relevant case law from the field of trade mark law makes it clear that the visual, aural and conceptual similarities of such commercial signs must be assessed by reference to the overall impressions created by the names, bearing in mind their distinctive and dominant components. In addition, the more distinctive the earlier sign, the greater the likelihood of confusion will be.

iii. The name relied on by the Applicant (its trade mark) has one element, HULU, which is a highly distinctive word, not one that is part of the English language.

iv. Aurally and visually, there is a clear and strong similarity. The mere doubling of a famous and well-known mark does not make the combination dissimilar to the original mark: PEPSIPEPSI is similar to PEPSI. KODAKKODAK is similar to KODAK. (Notwithstanding the evidence that the words HULU and HULUHULU have certain meanings in Mandarin and Hawaiian respectively, neither word has any meaning to the relevant public in the UK. Therefore, a conceptual comparison is not relevant.)

v. The Applicant’s extensive reputation associated with the name HULU, is such that there is a likelihood that consumers, on seeing the name HULUHULU will call to mind HULU, thereby suggesting a connection between the Primary Respondent and the Applicant. This is particularly the case if, as Mr Wawrzyniak states, the Primary Respondent Company creates a “set of internet platforms” as this would target the same relevant public as the Applicant, and the high similarity between HULUHULU and HULU makes it likely that they would appear in the same search engine results.

30. We largely accept the Applicant’s submissions above, although we are mindful in our assessment that the Applicant is principally operative in the US where its prominence is clearly far greater. We do not consider it comparably well-known in the UK to the examples of Pepsi or Kodak. Nonetheless, we take particular note that the contested Company name has, as its distinctive part, HULUHULU. Whilst twice as long as the Applicant’s name, it nevertheless is comprised entirely of a repetition of the Applicant’s name, HULU, a word which is inherently distinctive because it will be seen as an invented word, rather than a commonplace English word. Taken with the Applicant’s reputation extending to the UK – through press coverage of its impact in the US and through exposure to UK audiences viewing its content and noting its television award success - and where the parties’ respective businesses involve an emphatic online focus, we find that use of the contested Company Name in the United Kingdom would be likely to mislead the public by suggesting a connection between the Primary Respondent and the Applicant. There is thus a prima facie objection under section 69(1)(b) of the Act.

Defences

31. Section 69(4) of the Act provides a respondent with five potential statutory defences where a challenge under section 69(1)(b) is made out. The onus is on the Respondents to demonstrate through their evidence, on the balance of probabilities, the applicability of a defence. The Respondents rely on two of the five potential statutory defences under section 69(4)(a) – (e), namely that under section 69(4)(d) the name was chosen in good faith, and that under section 69(4)(e) the interests of the Applicant are not adversely affected to any significant extent.

The good faith defence

32. The relevant date for this defence is the date on which the company name was adopted i.e. 4 March 2020. Good faith is a broad concept which includes a failure to act in a commercially acceptable way; it includes, for instance. sharp practice which falls short of outright dishonesty. A combined subjective/objective approach is to be taken in assessing the honesty of a party’s behaviour. This involves (i) a consideration of what the party knew at the time of adopting the contested name and (ii) whether the adoption of the name would be viewed as commercially acceptable behaviour when judged objectively - this means how reasonable people in the field would view the Respondents’ behaviour (i.e. not simply how Mr Wawrzyniak viewed the actions).

33. It is notable that the Respondents do not deny awareness of the Applicant and its distinctive (invented) trade and company name. Much of the focus of the Respondents’ defence statement involves criticism of the Applicant’s position (being overseas etc) and an essential rejection of the claim that the names are similar. Mr Wawrzyniak states that at the end of March 2020 there were tens of millions of companies registered in the UK and USA so “to find a unique name is a bit hard using the reasoning of the Hulu LLC similarities, it wouldn’t allow you register most of them.”

34. Mr Wawrzyniak emphasises that the names are different from one another and easily distinguished. On this point, the relevant test under section 69(1)(b) is whether or not the names are sufficiently similar to suggest a connection, not whether there is a difference between them. Our findings on there being sufficient similarity are given above, and that the Primary Respondent has a name that differs from the name relied on by the Applicant, is not evidence that the contested Company Name was adopted in good faith.

35. He also denies there are “any bad intentions … towards Hulu” and states that he “just created a new start-up with an available name” (both at Companies House and for trade mark purposes). However, that the Respondents have undertaken the correct administrative steps to register a company is not, of itself, sufficient evidence that the name was chosen in good faith. We recognise that whether relevant searches have been carried out is a factor (to be considered among other factors) that may, in some circumstances, support a defence of good faith; however, simply because there was no UK-registered company called huluhulu or no registered trade mark for huluhulu is not enough to secure a good faith defence. It is trite to observe that a similar search for tescotesco may comparably return no conflicting result. This observation is of course not to suggest hulu has anything like the reputation or goodwill of Tesco, but hulu and huluhulu are both words which appear as invented non-English words. The Applicant’s evidence shows that a search for “Hulu” on the Google search engine yields significant numbers of hits, for instance 87 million on google.co.uk. Indeed, the Respondents’ evidence highlights that when “hulu” is typed into the search engine, the Applicant is revealed. This indicates that Mr Wawrzyniak would have encountered the Applicant’s name prior to the filing of its company name, since “hulu” would present itself in the first four typed letters in any search of the internet that he may have undertaken in respect of “huluhulu”.

36. A key consideration is that Mr Wawrzyniak’s account of the choice of the contested Company Name is sparse in view of the need for evidence that it was adopted in good faith. His witness statement says this:

The huluhulu logo reminds me of Hawaii; sweet, colourful, exotic and hot but overall as I mentioned in the provided evidence Huhuhulu is a unique name. The name huluhulu is adopted from “ Pu’u Huluhulu is a volcanic cone located near the centre of the Island of Hawaii in the State of Hawaii. It is located on the southern side of Hawaii Route 200 (Daniel K. Inouye Highway, also known locally as Saddle Road), directly across from the highway’s intersection with the Mauna Kea Access Road. Pu’u Huluhulu is Hawaiian for hairy hill (pu’u=hill and huluhulu=hairy). The cone is a kipuka, which is an older volcanic hill covered with vegetation, surrounded by the younger lava flow. The hill is located on Hawaii Route 200 and is a native tree sanctuary and a nature trail. Wikipedia Exhibit- SW-01

37. We find that the evidence does not explain the process of selection of the contested Company Name or convincingly show that the Hawaiian landmark was known to the Respondents prior to the registration of the contested Company Name. It is the Applicant’s suggestion that having received an objection, “Mr Wawrzyniak looked on-line for justification for naming his company after the Applicant, and the best he could find was the Hawaiian landmark.” We note that Mr Wawrzyniak gives no evidence of any knowledge of or personal connection with Hawaiian history or geography. Nor does the given translation of “hairy” offer any readily perceptible aptness that may cast light on its selection for the business name. Mr Wawrzyniak refers to it aligning with his own physical presentation, but it is difficult to credit any weight to that comparison, not least because he also refers to “hairy like the bear” and “Godzilla” (sic), which dislodges any intimation of a personal reason for the choice. There is no clear rationale for the selection of the name or the process that led to its adoption.

38. The Applicant provides an explanation of the Mandarin derivations of its own name that seem conceptually apt for its business offering, whilst simultaneously creating a company and brand name that is inherently distinctive (since it will generally appear to be a made-up word). This contrasts with the Respondents’ bare assertion that the contested Company Name was adopted from a Hawaiian landmark. That a landmark of that name exists does not meet the evidential burden to demonstrate positively that the contested Company Name was chosen in good faith.

39. As the Applicant indicates in its submissions, the Respondents’ evidence falls short of a coherent compelling account of good faith adoption. First, the contested Company Name comprises only part of the name of that landmark (which is “Pu’u Huluhulu”). Second, since the stated goal of the Primary Respondent is to create a “set of internet platforms”, where Mr Wawrzyniak makes direct comparisons with popular online platforms such as Facebook and eBay, it seems improbable given the size and reach of the Applicant, that the Applicant’s online platform (and therefore, the Applicant’s trade name and mark) was not in fact in the mind of the Respondents when the contested Company Name was adopted.

40. Mr Wawrzyniak’s evidence contains references suggestive of an exploration of an extremely ambitious multi-platform global endeavour. Such references include the stated ownership of huluhulu-based URLs for websites around the world, some initial research on promotional costs, and some form of written account of the various platforms envisaged, which includes a prediction of global penetration confidently asserted. It is possible that these references could indicate steps in earnest to launch the business model indicated above. However, even if it were the case that the evidence filed was clear and compelling on such matters, and included a convincing account of relevant background or expertise in the fields, whilst that may potentially give a basis for a defence against a claim of bad faith in trade mark proceedings, a genuine intention to launch a business is not enough to meet the evidential burden to demonstrate positively that the choice or adoption of the contested Company Name was one made in good faith. The proposed business model is not evidence that the Respondent’s name was chosen in good faith. Good faith must relate to the adoption of the particular name at issue (here similar to a distinctive word with a relevant reputation associated with the Applicant). We find that on the evidence filed the Respondents have not established their claimed defence under section 69(4)(d) of the Act.

No significant adverse effect.

41. The second defence relied on is under section 69(4)(e), where the onus of proof is on the Respondents to show that it is more probable than not that the interests of the Applicant are not adversely affected to any significant extent, despite the names being similar enough that use in the UK of the contested Company Name would be likely to mislead by suggesting a connection between the parties. The terms of the defence are written in the present tense and the matter is to be judged at the date of the filing of the application to the Tribunal for a change of name.

42. Various factors play into the consideration of this claimed defence, including the distinctiveness of the name relied on, the extent of the reputation and goodwill and the potential overlap of interests between the businesses of the parties. We note the following:

(i) The name HULU (as a word without meaning in the English-language) is inherently distinctive and the Applicant has a reputation in the production of content some of which is familiar to UK audiences and in the provision of online entertainment services, notwithstanding that only portions of the Hulu website itself and some video content are accessible to users in the UK.

(ii) The Primary Respondent is stated to have far-reaching ambitions in numerous countries via an internet-based range of portals and domains (including the UK).

(iii) This is not a question of the contested Company Name merely sitting in the register at Companies House; there is a stated intention that the contested Company Name is to be deployed in substance in trade and gaining public exposure.

(iv) Following the rejection of Mr Wawrzyniak’s offer to remove online streaming services from the scope of the Primary Respondent’s trade mark application, it remains the stated intention to use the name huluhulu as a trade mark for such services. (This must be the case because, despite Mr Wawrzyniak’s defence statement in his CNA 2 that “huluhulu will not have anything to do with an online television”, he also there states that the references in his trade mark application to online television remain specified. An application for registration of a trade mark must state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.

(v) While, on the basis of point (iv) above, it cannot be ruled out that the parties’ interests would conflict in a most direct fashion, it must be noted that in any event, a significant adverse effect on interests, referenced in the defence provision under section 69(4)(e), is not confined to potential diversion of trade or confusion; other factors may result in a significant adverse effect.

(vi) The Applicant has control neither over the business activity nor over the corporate filings of the Primary Respondent. In view of the association of the name HULU with the Applicant, resulting from its inventive coinage and the scale of the Applicant’s business reach, there is a real risk (which is to say a risk that is not fanciful or remote) of injurious association. This may arise from any number of aspects of the ways in which the Primary Respondent may conduct its business – from something as banal as the manner of its response to enquiries, to a failure to match the standards to which the Applicant’s customers have become accustomed (noting, for instance, the Applicant’s accolades variously evidenced, including for the quality of its website). The risk of adverse effect on the Applicant’s interests is further heightened by the potential for consternation among its wide network of investors and advertisers with a global reach, who would be equally alive to concerns of reputational risk.

43. We find that the Respondents have not shown that the interests of the Applicant are not to any significant extent adversely affected. The defence based upon 69(4)(e) also fails.

Outcome

44. The application to change the contested Company Name is successful. In accordance with section 73(1) of the Act, the following order is made:

(a) HULUHULU LTD (Company Registration 12496472) shall change its name within one month of the date of this order to one that is not an offending name i.e. one not incorporating the Applicant’s name or trade marks;

(b) HULUHULU LTD and Stefan Wawrzyniak shall:

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

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

45. 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. If no such change is made within one month of the date of this Order, a new company name will be determined as per section 73(4) of the Act and notice will be given of that change under section 73(5) of the Act.

46. All respondents, including Mr Wawrzyniak, have 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. Non-compliance may result in an action being brought for contempt of court and may result in a custodial sentence.

Costs

47. The Tribunal awards costs from the published scale at paragraph 10 of the Company Names Tribunal’s Practice Direction. This is intended to provide a contribution to, but not recompense, the successful party. It is the Applicant who has been successful in these proceedings and who is entitled to a contribution towards its costs. The award breakdown is as follows:

Fee for filing the application (Form CNA 1): £400

Fee for filing evidence (Form CNA 3): £150

Preparing a statement and considering the counterstatement: £450

Preparing evidence and considering and commenting on the respondents’ evidence: £700

Preparation of submissions in lieu of hearing: £300

Total: £2000

48. HULUHULU LTD and Stefan Wawrzyniak, being jointly and severally liable, are ordered to pay HULU LLC the sum of £2000 within twenty-one days of the expiry of the appeal period, or within twenty-one days of the final determination of this case if any appeal against this decision is unsuccessful. Under section 74(1) of the Act, an appeal can only be made in relation to the decision to uphold the application; there is no right of appeal in relation to costs.

49. Any notice of appeal must be given within one month of the date of this decision. Appeal is to the High Court in England and Wales and Northern Ireland and to the Court of Session in Scotland. The Tribunal must be advised if an appeal is lodged.

Dated 10 March 2022

Matthew Williams
Judi Pike
Mark Bryant
Company Names Adjudicator