Decision

Decision on UBS Group Holdings Limited

Updated 24 January 2024

Companies Act 2006

In the matter of application No. 2030 by UBS Group AG for a change to the company name of UBS Group Holdings Limited, company registration no. 12001103

1. Company no. 12001103 (“the primary respondent”) was incorporated on 17 May 2019 with the name UBS Group Holdings Limited.

2. On 5 June 2019, UBS Group AG (“the applicant”) filed an application to this Tribunal under section 69 of the Companies Act 2006 (“the Act”).

3. At the time this application was made, the nature of the primary respondent’s business was recorded on the Companies House website as “Construction of commercial buildings” and the company’s sole director was Mr Geoffrey Cecil Loader. Mr Philip Henry Loader was appointed as a director on 16 May 2020. On 11 May 2021, the nature of the business was changed to “Activities of head offices”.

4. Section 69 of the Act is as follows:

(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.

5. The applicant states that the name associated with it is “UBS” and that it was formed in 1910 as the Union Bank of Switzerland following the merger of two banks. In 1998, the Union Bank of Switzerland merged with the Swiss Bank Corporation to form UBS AG (now UBS Group AG). The applicant states that the company has operated under the name “UBS” in the UK since that date.

6. With regard to its goodwill and reputation, the applicant claims that it is one of the leading financial services companies in the UK, with headquarters in London and five regional offices. In the years 2011-2015, annual global turnover was between £25bn and £30bn. It states that advertising and sponsorship expenditure in the UK is routinely over £1 million per year.

7. The applicant gives the following explanation for its objection to the primary respondent’s name:

(1) The Applicant objects to the registered company name on the ground that it contains the identical element UBS and/or is a name that is sufficiently similar to UBS that its use in the UK would be likely to mislead by suggesting a connection between the Respondent and the Applicant.

(2) The Applicant does not permit third parties to use the UBS name within a third party’s corporate or trading name. Therefore, the use by the Respondent of the name UBS in its company name is likely to mislead by suggesting that the Respondent is either part of, or otherwise commercially associated with, the Applicant when that is not the case.

8. The applicant requests that the Tribunal make an order requiring the primary respondent to change its name to one that is not an offending name and that the applicant be awarded costs. The applicant indicates that it did not contact the primary respondent prior to making its application.

9. The primary respondent filed a notice of defence on 12 August 2019 and indicated that it was relying on a single defence based on section 69(4)(e) of the Act and claiming costs. It denies the applicant’s allegations and states that:

(1) The sign of the Respondent is not identical to the registered trade mark of the Applicant.

(2) The services the Respondent intends to provide are not identical (or even similar) to those for which the Applicant’s trade mark is registered.

(3) The prospect of any confusion on the part of the public is unlikely as

(i) The sign of the Respondent is not identical to the Applicant’s registered trade mark.

(ii) The services the Respondent intends to provide are not identical (or even similar) to those for which the Applicant’s trade mark is registered.

(iii) The Respondent will operate in the commercial sector therefore does not offer goods or services to the public, neither does it intend to trade with the public.

(4) The Respondent Company and its sign do not claim, either implied or apparent association with the reputation or trade mark of the Applicant, the Respondent’s trading activities would not take any unfair advantage of, be detrimental to, or bring into disrepute the trade mark of the Applicant.

(5) The Respondent company, as a company operating in the construction sector, not providing services in the UK or elsewhere in relation to the supply of financial services, or services legally similar to financial services, the use of the name UBS Group Holdings Limited would not amount to an infringement of the Applicant’s Registered UBS Marks under section 10(2) Trade Marks Act, 1994.

10. On 3 October 2019, Mr Loader was joined to the proceedings as co-respondent.

11. In these proceedings, the applicant is represented by Reddie & Grose LLP and the primary respondent and co-respondent are unrepresented.

Evidence

12. The applicant’s evidence consists of a witness statement by Richard Pakenham-Walsh, Legal Counsel in Group Functions Legal for UBS Group AG, dated 25 February 2021. It is accompanied by four exhibits and goes to the use by the respondent of the name UBS in the UK and its goodwill or reputation. I shall return to his evidence later in this decision.

13. The respondent has not filed evidence, although it provided a copy of a letter sent to the applicant’s representatives with its defence (CNA2).

Preliminary remarks

14. As has been seen, the primary respondent has made a number of references in its defence to trade marks and concepts of trade mark law, such as confusion and infringement. The law governing company names is different. This is why this decision does not refer to trade marks.

Decision

15. 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 company’s name, suggesting a connection between the company and the applicant. Only if this burden is discharged is it then necessary to consider if the primary respondent can rely upon defences under section 69(4) of the Act. The relevant date is the date of incorporation of the primary respondent, which, in this case, is 17 May 2019. The applicant must show that it had goodwill or a reputation at this date.

Goodwill

16. 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 the first start.

17. Mr Pakenham-Walsh states that the applicant has been providing services to clients in the UK since 1967. These services include wealth management, investment banking and asset management. Since 1998, the services have been provided under the name “UBS”. In addition, the name is also used with a logo comprising three keys:

18. Much of the evidence concerns the global reputation of the UBS name. Mr Pakenham-Walsh states that:

7. The UBS brand is currently ranked by BrandFinance in its Global 500 as the 205th most valuable brand in the world. The UBS brand is also currently ranked number 34 in the BrandFinance Global Banking 500 (100). Shown at Exhibit RPW2 are extracts from the Brand Directory website.

8. The UBS brand is valued by third party organisations as being worth between about USD 6 billion and USD 11 billion. According to BrandFinance, the current value of the brand is USD 9.169 billion.

19. Global turnover figures are given in the table below.

2020	In excess of £30bn
2019	In excess of £28bn
2018	In excess of £30bn
2017	In excess of £29bn
2016	In excess of £28bn
2015	In excess of £30bn
2014	In excess of £28bn
2013	In excess of £27bn
2012	In excess of £25bn
2011	In excess of £27bn

20. Global net profit figures were as follows:

2020	In excess of £6bn
2019	In excess of £4bn
2018	In excess of £4bn
2017	In excess of £1bn
2016	In excess of £3bn
2015	In excess of £6bn
2014	In excess of £3bn
2013	In excess of £3bn
2012	(Net loss in excess of £2bn)
2011	In excess of £4bn

21. Mr Pakenham-Walsh says that the global figures shown in the above tables include contributions from business conducted in the UK under the name UBS, but does not give an indication of the size of these contributions.

22. The applicant’s UK headquarters can be found in London and it has five regional offices (Birmingham, Newcastle, Manchester, Edinburgh and Leeds). Mr Pakenham-Walsh states that the UBS name features prominently on the outside of the buildings that house the London and Edinburgh offices.

23. The applicant gives brief details of examples of UK-based sponsorship activities:

• sponsorship of the Tate Modern art gallery until 2010;
• sponsorship of Formula 1 motor racing between 2010 and 2016, including sponsorship of the British Grand Prix;
• sponsorship of the Mercedes Formula 1 team since 2011;
• partnership with the London Symphony Orchestra to mid-2015; and
• long-term partnership and support of The Bridge Academy in Hackney

24. Exhibit RPW3 contains print outs from the website of The Bridge Academy and the Mercedes team. These are undated and read as follows:

The Bridge Academy:

Our award-winning partnership with UBS is based on a shared ambition to build continuous programme that gives students, staff and UBS employees superb opportunities to work and learn together, and have a positive impact on student achievements, attainment and personal development.

Through a combination of volunteer time and financial resource, the support from UBS (a global financial services firm) has a valuable impact on our students.

Mercedes team:

UBS has been a proud partner of Mercedes-AMG Petronas Formula One Team for 10 years. The partnership reflects the values UBS shares with the team – commitment to sustainable performance, striving for excellence and success through teamwork. The bank has made Formula One the centrepiece of its international sport sponsorship portfolio.

UBS works with private clients, institutions and corporations around the world to help answer some of life’s questions – whether through expert wealth management advice, investment banking and asset management expertise, or general banking advice in Switzerland.

25. Mr Pakenham-Walsh lists awards that have been won by the applicant between 2013 and 2021. Many of these are global awards. Screenshots from the applicant’s website showing awards are also included in Exhibit RPW4, along with articles referring to some of those awards. As an example, we reproduce the list of awards from 2018:

2018 UK-specific awards

• eFX Awards, FX Week, 2018 – Neo named Most Innovative Bank e-FX Platform of the Year 2018 global awards
  
• Best Private Bank for Sustainable and Impact Investing and Best Private Bank for Entrepreneurs at the Global Private Banking Awards 2018…
  
• The Euromoney Awards for Excellence – ‘World’s Best Bank for Wealth Management’
  
• Euromoney Private Banking Survey 2018 – ‘Best Private Banking Services Overall’
  
• Institutional Investor’s Top Global Research Firms 2018 - #1 Global Equities Research
  
• Global Derivatives Awards, Global Capital, 2018 – Structured Products House of the Year
  
• The Banker, Investment Banking Awards, 2018 – Most Innovative Bank for Equity-linked Products and Most Innovative Bank for IPO and Equity Raising
  
• Extel Survey, Europe Awards, 2018 - #1 in GEM Economics & Macros, and GEM Strategy
  
• Euromoney’s Award for Excellence, 2018 – Best Investment Bank in Western Europe, and Australia
  
• Institutional Investor’s All-Europe Corporate Access Ranking, 2018 – No. 1, Europe Access Provider
  
• Institutional Investor’s All-Europe Equity Tracking Team, 2018 – Pan-European High Touch Trading, European Portfolio Trading
  
• ExtelSurvey, Europe Awards, 2018 - #1 Equity Trading & Execution Service, Derivatives Sales, Small & Mid Cap Trading & Execution, and Equity Sales
  
• FX Survey, Euromoney, 2018 – Ranked #2 for Overall Market Share, #1 in Swaps Market Share and a Top 5 ranking in 15 other categories
  
• Trading & Technology Awards, Financial News, 2018 – Sellside Electronic Execution Department of the Year

26. Mr Pakenham-Walsh states that these awards “serve to keep the interest in and the recognition of the US brand high in the UK and the rest of the world”. He also refers to brand tracking done in the UK and says that this shows consistently strong awareness of the name among UK individuals and institutions. However, this is not corroborated by details from the tracking work.

27. The evidence provided by the applicant is not extensive. Notably, it does not contain any figures showing the size of the business within the UK. Nevertheless, I note that the business in the UK is of a longstanding nature, with the name being in use since 1998. The applicant has also sponsored major sporting and cultural events and institutions. Consequently, I find on the basis of this evidence that at the relevant date of 17 May 2019, the applicant enjoyed a reasonable level of goodwill in the name UBS in relation to financial services.

Does the respondent’s company name suggest a connection between it and the applicant?

28. As I have already noted, the applicant uses the word UBS on its own and with a logo.

29. The primary respondent’s name is “UBS Group Holdings Limited”. The word “LIMITED” indicates the legal status of the entity, while the phrase “GROUP HOLDINGS” indicates a company that holds assets for several other connected companies. The only distinctive element of the primary respondent’s name is “UBS”, which is identical to the name used by the applicant. Consequently, I find that the applicant has established the ground specified in section 69(1)(b) of the Act, and the onus now switches to the primary respondent to show that it has a defence under section 69(4) of the Act.

Defences

30. The primary respondent relies upon a single defence:

69(4) …

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

31. Adversely affecting the interests of the applicant to any significant extent requires more than a name just sitting on the register at Companies House. In this case, the adverse effect must relate to the potential use of the company name in business.

32. The principal activity for which the primary respondent’s company name is registered was “Construction of commercial buildings” and is now “Activities of head offices”. I also note that the primary respondent attached to its notice of defence a letter to the applicant’s legal representatives dated 19 June 2019 in which it denied that it operated, or had any intention to operate, in the financial services or investment banking sectors. However, under the Act, the connection under section 69(1) must be made upon the basis of the names themselves. The field of activity is not strictly pertinent and it has already been changed once.

33. The onus is on the primary respondent to prove that the applicant will not be adversely affected. It has filed no evidence to this purpose and relies only upon the argument I have outlined above. In the letter attached to its CNA2, the primary respondent describes its activities as managing the construction of commercial buildings. Such projects could be expected to require finance. There is potential for the public to make a connection between those two areas of activity. Even if that were not the case, it is for the respondent relying on a “no adverse effect” defence to show, in evidence, what it has done or intends to do. The primary respondent has not provided any evidence and the defence must fail at the first hurdle.

34. The respondent’s defence based upon section 69(4)(e) fails.

Conclusion

35. As I have dismissed the sole defence, the application succeeds.

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

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

(b) UBS Group Holdings Limited shall:

(i) take such steps as are within its 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.

37. 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.

38. 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.

39. All respondents, including Geoffrey Loader, 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

40. The applicant has been successful and is entitled to a contribution towards its costs, in accordance with the scale published at paragraph 10.1 of the Tribunal’s practice direction. The award has been calculated as follows:

Preparing a statement and considering the notice of defence: £400
Preparing evidence: £500
Official fee for filing the application: £400
Official fees for filing evidence: £150

Total: £1450

41. UBS Group Holdings Limited and Geoffrey Loader are jointly and severally liable for the above costs. They are ordered to pay UBS Group AG the sum of £1450. This sum is to be paid within 21 days of the period allowed for appeal or, if there is an appeal, within 21 days of the conclusion of the appeal proceedings (subject to any order of the appellate tribunal).

42. 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 separate right of appeal in relation to costs.

43. Any notice of appeal 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.

44. The Tribunal must be advised if an appeal is lodged so that implementation of the order is suspended.

Dated 1 April 2022

Clare Boucher
Company Names Adjudicator.