How it happens
A former employee, director or agent is well placed to trade under a company's name. They know the customers, the suppliers and the licence conditions, and they may hold copies of the certificate of incorporation, the licence and the letterhead that allow them to present themselves as the business. By the time the company notices, there is often a second company on the register with a confusingly similar name, social media accounts in the old name, and customers who cannot tell the two apart. In the regulated sectors the harm is greater, because the licence is being used by a person the regulator has never assessed.
The remedies
Several remedies run in parallel, and the choice between them depends on what the insider has done. The tort of passing off protects the goodwill in the name against a trader who misrepresents a connection with the business, and section 35 of the Trademarks Act preserves that right of action whether or not the name is registered as a mark. Where the name is registered, section 36 gives the proprietor the right to sue for infringement, and section 79 provides the civil remedies for infringement.
Where a similar name has been registered as a company, the Companies Act, Cap. 106 gives the Registrar power to act. Section 34 prohibits the registration of a name that is undesirable or too like a name already on the register, section 38(2) permits the Registrar to direct a company registered under a name too like an existing company's name to change it, and section 35 permits a direction to change a name that gives a misleading indication of the company's activities, with the power to strike the company off if the direction is ignored. An application to the Registrar on a statutory declaration under section 286 is quicker and cheaper than a suit, and it is the first step where the insider has incorporated.
Where a licence has been used without authority, the licensing regulator has its own interest in the matter, and a letter to the regulator setting out the facts produces an inquiry the insider has to answer. Where the insider took confidential information, the confidentiality terms of the contract of employment or service agreement are enforceable against them by injunction, and the Employment Act, Cap. 226 does not displace those terms after the employment ends.
The first letters
The first letters decide most of these matters. Each sets out the facts, the rights relied on and the remedy sought in terms a court would recognise, and each goes to a party who has to act: the former insider, the Registrar, the regulator and, where customers are being misled, the customers themselves. A demand that gives particulars, attaches the evidence and fixes a date for compliance is usually complied with, because the insider's advisers can see what the plaint would say. A letter that only threatens is ignored.
Where the letters do not produce compliance, the suit is filed in the Commercial Division of the High Court with an application for an interim injunction under Order XLI of the Civil Procedure Rules, S.I. 71-1, supported by the evidence already assembled for the letters. The application is heard quickly because the harm is continuing, and the injunction usually ends the matter.
The firm's work
The firm acts on infringement, passing off and the unauthorised use of a company's name or licence by a former insider, before the Registrar, the regulators and the High Court. It also drafts the confidentiality and know-how terms, and the assignments of intellectual property, that keep ownership with the company when developers, consultants and founders leave.