Decision

Decision on Prosegur Limited

Updated 28 July 2022

Companies Act 2006

In the matter of application No. 3371 by Prosegur Compañía De Seguridad, S.A. and Prosegur Soluciones Integrales de Seguridad España, S.L. for a change to the company name of PROSEGUR LIMITED, a company incorporated under number 12850930

Background and pleadings

1. The company name PROSEGUR LIMITED (“the primary respondent”) has been registered since incorporation on 1 September 2020 under number 12850930. The Companies House website describes the primary respondent’s “Nature of business (SIC)” as “94110 - Activities of business and employers membership organisations, 94990 - Activities of other membership organisations not elsewhere classified, 96090 - Other service activities not elsewhere classified.”

2. By an application filed on 17 December 2020, Prosegur Compañía De Seguridad, S.A. and Prosegur Soluciones Integrales de Seguridad España, S.L. applied under section 69(1) of the Companies Act 2006 (“the Act”) for the primary respondent’s name to be changed.

3. Prosegur Compañía De Seguridad, S.A. and Prosegur Soluciones Integrales de Seguridad España (“the applicants”), S.L. refer to themselves in the application as a single company, about which I say more below. They state that the name Prosegur is associated with them and that the applicants’ company, “Prosegur”, was founded in 1976 and is a global business, including operating in the UK, in respect of alarms, cash management, security, cyber security and added-value outsourcing services.

4. The applicants claim:

We consider the registration hereby challenged is opportunistic as it prevents us from registering a name in which we had goodwill. Additionally we consider such registration has been made in bad faith as its Director, Mr Perseo Sanz Gonzalez, is apparently (his same name appears in document No.9 as representative of SasegurS.L.) a former employee of the Spanish Security Company Sasegur S.L., a competitor of Prosegur in the security field located in Madrid, same province where our headquarters are, and therefore in such case, being professional of the same sector and country, it is understood that such person has knowledge of the existence of Prosegur.

5. A number of documents pertaining to the primary respondent’s registration are attached to the application form, as are details of trade mark registrations belonging to the applicants and UK HMRC VAT registration details from July 2015 in respect of the applicants. A copy of a cease and desist letter sent to the primary respondent on 14 December 2020 is also attached, as is ‘Document No.9’, in Spanish, which is said to prove that the primary respondent’s director worked for Sasegur S.L. A screenshot for the latter company is included in document number 10.

6. The primary respondent filed a notice of defence and counterstatement, which was signed with a statement of truth by Mr Perseo Sanz Gonzalez. The counterstatement includes the following:

• the primary respondent does not operate in security services of any other market related to the applicants’ use of PROSEGUR;
• the primary respondent has been operating in British and international markets, based in London, since September 2020;
• the applicants registered a company name in the UK, Prosegur Security UK Limited, on 16 December 2020 to cause confusion with the primary respondent and to take opportunistic advantage of the primary respondent;
• the applicants left the British security market in 2016; and,
• the primary respondent puts the applicants to proof that the primary respondent acted in bad faith and opportunistically

7. Attached to the counterstatement are a number of documents, including a print confirming the dissolution of a company named PROSEGUR LTD, number 09304441. The company was dissolved on 24 May 2016. The primary respondent claims that this company belonged to the applicants.

8. The primary respondent relies upon the following defences:

• that the company name was registered before the commencement of the activities on which the applicants rely to show goodwill or reputation;
• that the company is operating under the name, or is proposing to do so and has incurred substantial start-up costs in preparation, or was formerly operating under the name and is now dormant;
• that the company name was adopted in good faith; and,
• that the interests of the applicant are not adversely affected to any significant extent

9. Following the serving of the defence and counterstatement upon the applicants, the applicants appointed professional representatives, J A Kemp LLP. The primary respondent represents itself via its director, Perseo Sanz Gonzalez. Only the applicants filed evidence. The parties were asked if they wanted a decision to be made following a hearing or from the papers. Neither side chose to be heard, and only the applicants filed written submissions in lieu of attendance. The primary respondent has not filed any documents other than the defence, counterstatement and attachments thereto. I make this decision having carefully considered all the papers, referring to them where it is relevant and necessary.

Legislation

10. 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/reputation

11. The applicants must establish that they had, at the relevant date, goodwill or a reputation in relation to a name that is the same, or sufficiently similar, to that of the company name suggesting a connection between the company and the applicant. The relevant date for the purpose of proving goodwill/reputation is the date of the registration of the contested company name which, in this case, is the date of incorporation, 1 September 2020.

12. Section 69(7) of the Act defines goodwill as a “reputation of any description”. Consequently, in the terms of the Act, goodwill is not limited to Lord Macnaghten’s classic definition in Inland Revenue Commissioners v Muller & Co’s Margerine Ltd [1901] AC 217 at 223:

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.

The applicants’ evidence

13. The applicants’ evidence takes the form of two witness statements and exhibits. The first is from Diolimar Garcia González, dated 7 September 2021, giving details of the applicants’ business and also details about the primary respondent and Perseo Sanz Gonzalez. The second is from Tom Albertini, a trade mark attorney at J A Kemp LLP. The purpose of Mr Albertini’s evidence is to adduce translations of parts of Diolimar Garcia González’s evidence. As there are two individuals in these proceedings with the name González or Gonzalez, I will refer to them by giving their full names.

14. Diolimar Garcia González has been the Corporate Legal Director of Prosegur Compañía De Seguridad, S.A. and its subsidiaries since February 2017. He refers to the two applicants and states that Prosegur Compañía De Seguridad, S.A. (“PCS”) is really the sole complainant because Prosegur Soluciones Integrales de Seguridad España, S.L. (PSS”) is a wholly owned subsidiary of PCS. PCS holds the intellectual property rights, including goodwill, for and on behalf of PSS, as well as those of another member of the PCS company group, called Prosegur España, S.L.U. (“PE”). Both PSS and PE are entities through which PCS operates in the UK. For simplicity, for the remainder of this decision I will refer to the group of PCS companies as “the applicant”. I note the following key points from the evidence, using the translations provided by Mr Albertini’s evidence where pertinent:

• PSS began trading in the UK in July 2015, becoming resident for tax purposes in the UK in 2017 and paying corporate tax, and opening offices in Millbank, London on 25 September 2017;
• as a development of the business, the applicant registered the company name Prosegur Security UK Limited on 16 December 2020. It was at this point that it became aware of the primary respondent
• the applicant specialises in private security goods and services; in particular, alarms, cash management, security, cyber security, added-value outsourcing services and related consultancy. It has 160,000 employees in 26 countries, including the UK;
• all the applicant’s companies trade under names containing the core element PROSEGUR. The applicant’s UK turnover between 2015 and 2020 was:

2015: EUR 762,032.29

2016: EUR 2,250,409.33

2017: EUR 1,128,562.07

2018: GBP 2,438,981.58

2019: GBP 1,479,169.03

2020: GBP 2,370,849.49

• a spreadsheet listing invoices issued by the applicant to its UK client base for the provision of security services including surveillance, risk analysis, data management, installation and maintenance of security technology, electronic article surveillance, remote monitoring and cybersecurity between 2018 and 2021 (2021 is after the relevant date) is shown in Exhibit DGG6 and the translated version in Exhibit TPA3. I note that Amazon UK Services Ltd and Zara UK Ltd were among the applicant’s clients;
  
  
• a selection of invoices shown in Exhibit DGG7 show UK clients in Bristol, Glasgow, Guildford, Greenhithe, Leicester, London, Manchester, Solihull and Southampton. The invoices show goods and services such as fire extinguishers; components of security systems, such as laser cameras; and, security system certification, programming and maintenance. PROSEGUR is shown at the top of the invoices

15. On the basis of the applicant’s evidence, I am satisfied that, at the relevant date, the applicant had a substantial goodwill in the UK, of which PROSEGUR was distinctive, in relation to its business of alarms, cash management, security, cyber security and added-value outsourcing services, as claimed in the application.

16. The contested company name is PROSEGUR LIMITED. The only difference between the company name and the name associated with the applicant is the addition of LIMITED. Limited merely indicates the corporate status of the company and so this element of the company name does not have a bearing upon the comparison of the names. Consequently, I agree with the applicant that the provisions of section 69(1)(a) are satisfied as the names are identical. In any event, they clearly satisfy the provisions of section 69(1)(b) as being similar (highly so).

Defences

17. As the ground specified in subsection 69(1)(a) is established, the onus switches to the primary respondent to establish whether it can rely on any of the defences pleaded. The primary respondent relies upon the defences identified at sections 69(4)(a), (b), (d) and (e) of the Act.

• that the company name was registered before the commencement of the activities on which the applicants rely to show goodwill or reputation (section 69(4)(a));
• that the company is operating under the name, or is proposing to do so and has incurred substantial start-up costs in preparation, or was formerly operating under the name and is now dormant (section 69(4)(b));
• that the company name was adopted in good faith (section 69(4)(d)); and,
• that the interests of the applicant are not adversely affected to any significant extent (section 69(4)(e))

18. It is for the primary respondent to make good its defences through filing evidence. Despite being invited by the Tribunal to file evidence after the applicant filed its evidence, there was no response from the primary respondent. The only documentation which it has filed in these proceedings is the defence and counterstatement, and some attachments, as set out earlier in this decision. I will treat them as evidence because the defence and counterstatement were signed with a statement of truth by Perseo Sanz Gonzalez.

19. The first defence is that PROSEGUR LIMITED was registered before the commencement of the activities on which the applicant relies to show goodwill. The primary respondent’s company name was registered on 1 September 2020, which is clearly some years after the commencement of the activities on which the applicant relies to show goodwill, as shown in the applicant’s evidence. This defence, under section 69(4)(a) of the Act, fails.

20. The second defence is that the company is operating under the name, is proposing to do so and has incurred substantial start-up costs in preparation, or was formerly operating under the name and is now dormant. The relevant date for this defence is the date on which the application to change the contested company name was made: 17 December 2020. The evidence from the primary respondent is an assertion in the counterstatement that the primary respondent has been operating in British and international markets, based in London, since September 2020. In the counterstatement, Perseo Sanz Gonzalez states that the primary respondent has a webpage registered in the UK, LinkedIn and Twitter profiles. He does not say what the business is or give any details about it other than it is not in the security market or any other market related to the applicant’s use of PROSEGUR.

21. Document 5, attached to the defence and counterstatement, contains a screenshot from the primary respondent’s Twitter page. The screenshot shows that the primary respondent joined Twitter on January 2021, after the relevant date. There were no followers (the company was following two others). On 25 January 2021, the tweet read “@limitedprosegur starts international development. Here We go!”, but there are no other details. There is also what appears to be a Spanish language version of the Twitter page, but the left-hand side of it is missing. Another screenshot, undated, looks as though it might be from a website, and is headed “Prosegur Limited. Professional Services Guaranteed for your business plans”, but no more than that. Also in Document 5 is a print from Nominet as to the existence of a domain name, prosegur.or.uk, registered on 21 September 2020. None of this evidence, and the unsupported assertion of operating in the UK (or Britain) since September 2020, comes anywhere near to establishing that, at the relevant date, the primary respondent was operating under the name, was proposing to do so and has incurred substantial start-up costs in preparation, or was formerly operating under the name but had become dormant.

22. Although the onus is on the primary respondent to support its defence, the applicant has filed, in evidence, the results of its research into the primary respondent and its lack of trading activity. Diolimar Garcia González states that a search of the Companies House website indicates that the primary respondent’s registered office is associated with at least 1,000 other registered companies and is associated with the ‘virtual office’ company 1st Formations Limited (Exhibit DGG12). Exhibit DGG13 contains a screenshot of the website page I refer to as being contained in Document 5 (attached to the defence and counterstatement). More of the screen is revealed in the applicant’s version. The services said to be on offer are:

23. Despite the offer of a 10 minute call, there are no telephone numbers (there is an email address). Diolimar Garcia González states that the website, at the domain name proesgur.org.uk, was created using the ‘Weebly’ software platform, and the Youtube video linked to the website was created using the ‘Renderforest’ software platform. Diolimar Garcia González has included in Exhibit DDG13 information from the Weebly and Renderforest website showing that both of them can be accessed free of charge and that the paid-for versions are inexpensive. Weebly’s most expensive software costs £18 per year and Renderforest’s most expensive version costs £39.99 per year or £15.99 to create a single video. The applicant’s evidence paints a picture of vague, indeterminate services with no evidence of trading, and a distinct lack of substantial start-up costs if, at the relevant date, the primary respondent was preparing to trade. The primary respondent could have refuted the applicant’s evidence by filing evidence in response, but instead chose to remain silent. In any event, the evidence in and attached to the counterstatement does not support its defence. The defence under section 69(4)(b) fails.

24. In the defence and counterstatement, Perseo Sanz Gonzalez states:

…applicant needs to explain what is the value as evidence of documents attached regarding “opportunistic and bad faith action from my side as a Director” because documents attached are irrelevant for this action.

25. This appears to be a call from the primary respondent for the applicant to make good its claim that the contested company name was registered in bad faith and was opportunistic. The Act makes it clear that if the provisions of section 69(1) are satisfied, as they are in this case, that it is for the primary respondent to support any defences relied upon. It is not for the applicant to prove that the name was adopted in bad faith: the onus is on the primary respondent to prove that the contested company name was adopted in good faith. The primary respondent is the party which bears the burden of evidential proof, not the applicant.

26. The defence and counterstatement contain no explanation as to how the contested company name was arrived at and why it was chosen. Instead, Perseo Sanz Gonzalez concentrates on attacking the applicant’s motive for registering the company name Prosegur Security UK Limited on 16 December 2020, referred to by Diolimar Garcia González in his evidence for the applicant as the moment when the applicant became aware of the primary respondent. The high point of the counterstatement, as far as any reason for adopting the company name goes, is the claim that a company associated with the applicant, PROSEGUR LTD, was dissolved on 24 May 2016. This may be relevant to a perception that the applicant no longer traded in the UK after this date. However, simple research would have revealed the scale of the applicant’s trade in the UK via its other subsidiaries which contain PROSEGUR in their names, referred to in the applicant’s evidence. The applicant had not ceased to trade in the UK; far from it.

27. This fact is also likely to have been known to Perseo Sanz Gonzalez since his career background was in the same area of business as the applicant. Despite his denial in the counterstatement that he was a former employee of the Spanish Security Company Sasegur S.L., a competitor of Prosegur in the security field, the applicant has provided proof of this fact which has not been responded to by the primary respondent. Exhibit DGG15 contains a copy of the minutes of a meeting of the Contracting Table of a local government agency from 9 May 2018 (in Spanish, the translated version comprises Exhibit TPA4). An individual named Perseo Sanz Gonzalez was recorded as having attended the meeting on behalf of Sasegur, S.L. Also included in the exhibit is a print of Perseo Sanz Gonzalez’s LinkedIn page which lists Sasegur, S.L. in his employment history, from October 2016 to August 2020, along with other security companies before and after this period. August 2020 was the month prior to the adoption of the contested company name (and registration of the primary respondent).

28. The primary respondent has failed to meet the burden of proving that the contested company name was adopted in good faith. Although the applicant was not required to prove that the name was adopted in bad faith, the impact of its evidence is amplified by the lack of rebuttal by the primary respondent. The defence that the name was adopted in good faith, under section 69(4)(d) of the Act, fails.

29. The final defence is that the interests of the applicant are not adversely affected to any significant extent. The primary respondent has not provided any evidence to support this defence. It states that is not in the same line of business, but does not explain what its business plans are. Although the listed services in its company registration do not appear to be security services and related goods and services, the business area, as registered with Companies House, of the primary respondent could change. Of significance is the employment history of the primary respondent’s director, Perseo Sanz Gonzalez, which is the same business as that of the applicant. It is entirely feasible that the primary respondent, under the control of its director, could operate in the field in which he has experience and which is the same as that of the applicant. Such activity would bring the primary respondent into direct confusion with the applicant, resulting in, for example, loss of trade or damage to the applicant’s reputation. This would adversely affect the interests of the applicant to a significant extent. The defence under section 69(4)(e) of the Act fails.

Outcome

30. The primary respondent cannot rely upon any of its defences. As a consequence, the application is successful. In accordance with section 73(1) of the Act, I make the following order:

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

(b) Prosegur Limited 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.

31. 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.

32. In any event, if no such change is made within one month of the date of this order, I 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.

Costs

33. The Tribunal awards costs from the published scale at paragraph 10 of the Tribunal’s Practice Direction. This is intended to provide a contribution, but not recompense, to the successful party. It is the applicant who has been successful in these proceedings and who is entitled to a contribution towards its costs. At the end of its written submissions in lieu of a hearing, the applicant says:

To the extent that the Application is upheld, the Applicant reserves the right to seek costs off the scale and on an indemnity basis at a later date.

34. The applicant is allowed fourteen days from the date of this decision to explain why it seeks costs off the scale and a breakdown of its costs. If these are provided, the primary respondent will be allowed fourteen days to reply. I will then issue a separate decision covering my assessment of the same. If no such submissions or breakdown of costs is provided by the applicant by that date, I will issue a separate costs decision based upon the published scale.

35. Given what Diolimar Garcia González states in his evidence about Prosegur Compañía De Seguridad, S.A. being the complainant (applicant) rather than Prosegur Soluciones Integrales de Seguridad España, S.L., it would be helpful if the applicants would indicate whether the cost award should be paid solely to Prosegur Compañía De Seguridad, S.A. or jointly to Prosegur Compañía De Seguridad, S.A. and Prosegur Soluciones Integrales de Seguridad España, S.L. (which may or may not be on scale, depending on the outcome of the subsequent decision).

Appeal

36. 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. Any notice of appeal against the upholding of the application to change the name must be given within one month of the date of this decision, but there will be no right of appeal in respect of the subsequent costs decision.

37. Appeal is to the High Court in England Wales and Northern Ireland and to the Court of Session in Scotland. The Tribunal must be advised if an appeal is lodged.

Dated 11 May 2022

Judi Pike
Company Names Adjudicator