Decision

Company Names Tribunal decision: Intelmatix limited

Published 19 April 2023

Order under the Companies Act 2006

In the matter of application No. 3618 by Intel Corporation for a change to the company name of INTELMATIX LIMITED, a company incorporated under number 13518237

Background and pleadings

1. The company name INTELMATIX LIMITED (“the primary respondent”) has been registered since incorporation on 19 July 2021 under number 13518237. The Companies House website describes the primary respondent’s “Nature of business (SIC)” as “62020 – Information technology consultancy services.”

2. By an application filed on 2 September 2021, Intel Corporation (“the applicant”) applied under section 69(1) of the Companies Act 2006 (“the Act”) for the primary respondent’s name to be changed.

3. The applicant states that it is the world’s largest semiconductor chip maker. It claims that it has goodwill or reputation in the name INTEL in relation to:

• “wired and wireless Internet connectivity products, including network adapters and embedded wireless cards, based on industry-standard technologies used to translate and transmit data in packets across networks;

• other communications infrastructure products – including network processors, communications boards, and optical transponders – that are basic building blocks for modular communications platforms;

• microprocessors with one, two or four processor cores, designed for desktops, workstations, servers, notebooks, embedded products, communications products, and consumer electronics;

• chipsets designed for desktops, workstations, servers, notebooks, embedded products, communications products, and consumer electronics;

• motherboard products designed for the applicant’s desktop, workstation and server platforms;

• flash memory and networked storage products;

• software development products;

• education and training (the applicant provides face to face and online training for teachers to enable them to integrate technology into the classroom); and

• consultancy services (the applicant provides assistance to software developers and computer manufacturers in the design of their systems. For example, the “Intel Software Partner Program” offers planning, technical, marketing and sales resources to help businesses stay on top of software developments).”

4. The applicant claims that the contested company name is highly similar to INTEL and would be likely to mislead by suggesting a connection between the company name and INTEL. It claims costs.

5. The applicant requested that Anas Faris Alfaris, a director of the primary respondent, be joined as a co-respondent.

6. The primary respondent filed a notice of defence and counterstatement on 29 March 2022; after the deadline of 22 November 2021, but admitted for the reasons given in a letter dated 16 March 2022, reproduced here, which followed a hearing:

I refer to the joint hearing held by telephone on Monday 7 March 2022, which concerned the primary respondent’s (“PR”) retrospective extension of time request of 21 January 2022, for the purpose of filing its defence and counterstatement (form CNA2).

The Tribunal’s preliminary view of 31 January 2022 was to refuse the retrospective extension of time request, owing to insufficient reasons. The reasons given were that the PR had not received the letter dated 22 October 2021 serving the application. As it did not receive the letter, it could not have known that it was to file a defence by 22 November 2021.

The PR’s professional representatives filed the retrospective extension of time request, having been appointed after the expiry of the defence deadline. Prior to that, on 21 December 2021, the PR’s director, Bilal Raza, had requested to be heard in relation to the Tribunal’s letter of 8 December 2021, which informed the PR that it had not filed a defence and counterstatement, with the consequence that the adjudicator may change the company name. Mr Bilal was appointed as director on 14 December 2021. His hearing request (via form CNA4) states that the PR did not receive the letter of 22 October 2021.

The letter dated 22 October 2021 was correctly served upon the PR’s registered address as it was at that time, on the Companies Register. It reached the registered address because the post was returned to the Tribunal as “addressee unknown”, “refused” and with the envelope stating that the PR had never been at that address.

When the PR’s professional representatives for the purpose of these proceedings were appointed, the hearing request made by Mr Raza was withdrawn and, instead, the request for a retrospective extension of time was made in order to file the CNA2 and counterstatement. When that was refused, the PR asked for the hearing which took place before me.

The PR’s professional representatives, Cameron Intellectual Property, filed skeleton arguments two days before the hearing, as required. The applicant’s professional representatives also filed skeleton arguments by the required deadline. Mr Parrish of Cameron McKenna Nabarro Olswang LLP appeared for the applicant. Ms Blake of Cameron Intellectual Property appeared for the PR. Attached to Ms Blake’s skeleton argument were a number of documents: a copy of a previous decision of the adjudicator, intended to show that there had not been parity of treatment; a draft of the PR’s defence (form CNA2 and counterstatement); a witness statement from Mr Raza; and, a witness statement from Simon Evans, managing director of a company which had assisted the PR in setting itself up (Nean Wealth Advisors). Mr Parrish objected to the documents. In his view, they were tardily filed. He also submitted that the hearing was to consider the extension request as filed on 21 January 2022, not with extra reasoning provided shortly before the hearing.

I understand the applicant’s concerns. However, viewing a chronology of events, including what was and was not done by the Tribunal, and factoring in the timing of the letter serving the CNA1 and what was happening in the UK as regards Covid restrictions, I have decided that the fairest outcome is that I should reverse the preliminary view and allow the retrospective extension of time.

I can see from the file that, once appointed, the PR’s representatives asked the Tribunal for a copy of the CNA1. This is because the post had been returned to the Tribunal and there was no copy of the CNA1 enclosed with the Tribunal’s letter of 8 December 2021, which was the only post seen by the PR. The Tribunal sent the PR a copy of the CNA1 on 4 February 2022. The PR could not file a (late) CNA2 and counterstatement with its extension request of 21 January 2022 because it had not seen the CNA1.

It transpires from the witness statements of Mr Raza and Mr Evans that the PR’s registered address was that of Mr Evans’ company, in a shared office, which the PR was temporarily using at the end of October 2021 when Covid restrictions were increasing once again (owing to the Delta variant), working from home was required by the UK Government, and self-isolation was widespread.^{[footnote 1]} Six different businesses operated from this address. Mr Raza, director of a newly-formed company (formed in July 2021), had been unable to find more permanent offices in London because he was living with vulnerable people and did not want to visit the city. Likewise, Mr Evans, who describes himself as being of an age considered to be vulnerable to Covid, was not visiting the shared office to collect post. The arrangement was that the regular receptionist for the shared offices distributed the mail to the recipients. Mr Evans states that the shared offices have been largely empty during the pandemic and that the regular receptionist had been isolating on at least two occasions and working from home on many occasions when this was a requirement from the UK Government. Access to the offices had to be arranged with those managing the building. When a temporary receptionist was working instead of the regular receptionist, there were instances of mail being mislaid or returned to sender.

It appears that usual arrangements were disrupted to a significant extent by the pandemic. This included the mail from the Tribunal as well as other pieces of mail; once the regular receptionist was back in the physical office, they arranged for post to be delivered/scanned. This explains why the 8 December 2021 letter was eventually received. Mr Raza states that he became aware of the Tribunal’s letters on 21 December 2021 when the 8 December 2021 letter was forwarded to him. The Tribunal’s letter of 8 December 2021 did not attach a copy of the CNA1. 21 December 2021 was the date on which Mr Raza filed the hearing request. He acted straightaway.

The applicant submits that the PR is the author of its own misfortune; that it must have known that receipt of the post was dependent upon the actions of a single receptionist; and, for that reason, its choice of registered office was poor, given the requirements of section 86 of the Companies Act 2006 (“the Act”), which states “A company must at all times have a registered office to which all communications and notices may be addressed.

The PR did have a registered office to which all communications and notices could be addressed. I do not understand section 86 to mean that draconian consequences must follow if post is not received at that address. There would be little point in the adjudicator’s discretion provided by rules 3(4) and (7(1) and (2) of the Company Names Adjudicator Rules (“the Rules”):

“3(4) The primary respondent, before the end of that period, shall file a counter-statement on the appropriate form, otherwise the adjudicator may treat it as not opposing the application and may make an order under section 73(1).

…

7(1) The adjudicator may extend (or further extend) any period which has been specified under any provision of these Rules even if the period has expired.

(2) Any party can request an extension of any time period specified under any provision of these Rules.

Although the Covid-19 pandemic has had a deleterious effect on many aspects of life, it is not a panacea to cure all procedural wrongs. However, in this case I consider it appropriate to exercise my discretion. Such a discretion would exist even without the extension of time request having been made. If the hearing had been appointed which was requested directly by Mr Raza, it is likely that he would have been required to file an explanatory witness statement alongside his CNA2 for the adjudicator’s consideration. I am aware that the Intellectual Property Office (“IPO”) deals with hearings against refusal of late-filed defences in trade mark proceedings in this manner. Further, I am aware of an appeal to the Appointed Person from a refusal by the IPO to allow a late-filed defence in trade mark proceedings owing to pandemic-related reasons.^{[footnote 2]} The appeal was successful, and I note that the Appointed Person, in making observations about business disruption as a result of the pandemic, referred to a major public health crisis “that was too abnormal to be regarded as a situation to which the disciplinary consequences of the rule were intended to be mechanistically applicable”.

Mr Raza acted immediately he was aware of the 8 December 2021 letter. He then appointed professional representatives who set about gathering information from the Tribunal as to what the application was against the PR and why the letters had not been received. There was, and is, a clear intention by the PR to defend its company name in these proceedings. The draft defence is ready: under rule 7(1), I allow 14 days from the date of this letter for form CNA2 and the counterstatement to be filed by the PR.

The PR did not seek the costs of the hearing if it was successful; therefore, no costs are applicable.

Yours faithfully,

Judi Pike
Company Names Adjudicator

7. The primary respondent denies the claim, puts the applicant to proof of reputation or goodwill, and relies upon the following defences:

• that the company is operating under the name;
• that the company name was adopted in good faith; and,
• that the interests of the applicant are not adversely affected to any significant extent

8. The primary respondent claims that INTEL is not the dominant and distinctive element in its name because it is non-distinctive in relation to the intelligence and/or information sector, providing a definition from the Cambridge online dictionary. The primary respondent states that it has attended numerous trade shows, signed contracts of work in the UK and hired employees. It claims, therefore, that it is already operating under the contested name. The fact that the primary respondent has independent business objectives, has appeared at trade shows and attracted payable work shows, it claims, that the name was adopted in good faith. Further, the name was chosen as a fanciful amalgamation of INTELligent and inforMATICS, with an ‘X’ instead of the ‘CS’. This is because the primary respondent offers intelligent informatics technology products in the artificial intelligence and software products industry. During due diligence searches, the primary respondent found no other similar or conflicting company using INTELMATIX.

9. The primary respondent also claims that the interests of the applicant are not adversely affected to any significant extent because the names and the parties’ businesses are too different to cause a connection.

10. The primary respondent requests off-scale costs.

11. Following the serving of the defence and counterstatement upon the applicant, Anas Faris Alfaris was joined as a co-respondent to the proceedings, no objection having been made by Mr Alfaris.

12. The applicant is represented by CMC Cameron McKenna Nabarro Olswang LLP. The respondents changed representatives after the filing of the defence and counterstatement and are now represented by Birkett Long LLP. The parties filed evidence. The respondents filed submissions with their evidence. The parties were asked if they wanted a decision to be made following a hearing or from the papers. No hearing was requested and only the applicant filed written submissions in lieu of a hearing.^{[footnote 3]} We make this decision having carefully considered all the papers, referring to them where it is relevant and necessary.

Legislation

1. 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

14. The applicant must establish that it 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 application for a change to the company name, 2 September 2021.^{[footnote 4]}

15. Section 69(7) of the Act defines goodwill as a “reputation of any description”. Consequently, in the terms of the Act, goodwill includes, but 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.

16. On 7 April 2022, the Tribunal served the notice of defence and counterstatement and gave the applicant a deadline of 7 June 2022 to file its evidence. On 21 April 2022, the applicant wrote to the Tribunal, asking it to take judicial notice of the applicant’s reputation in computer-related goods and services following Intel Corporation Inc v CPM United Kingdom Ltd [2007] ETMR 59.^{[footnote 5]} The applicant pointed out that the Tribunal had taken this approach in previous applications it had made to the Tribunal, citing various references. In its response of 25 April 2022, the Tribunal acceded to the applicant’s request in relation to computer-related goods and services and allowed the applicant until 25 June 2022 to file any other evidence, if it so wished. The respondents did not object to this course of action.

The applicant’s evidence

17. Two of the applicant’s three witness statements are from Oscar Webb, a solicitor with the applicant’s representatives. In his first witness statement, he refers to actions taken against other companies which include ‘Intel’ in the registered company name.^{[footnote 6]}This evidence was filed in response to content in the counterstatement about such names. We do not propose to address this evidence because whether or not the applicant has taken action against other company names is irrelevant to these proceedings. Mr Webb’s second witness statement is about artificial intelligence (“AI”) and points out that various parts of the primary respondent’s evidence refer to its AI business, as do prints which he exhibits from the primary respondent’s website, presumably current at the time he made his witness statement on 1 December 2022.^{[footnote 7]} For reasons which will become clear, we do not need to address this evidence.

18. The other witness statement is from Christopher E. George, the applicant’s Assistant Corporate Secretary.^{[footnote 8]} Mr George’s evidence concerns the applicant’s business activities in relation to AI. Mr George states that his evidence was filed in response to the counterstatement, in which the primary respondent stated that its own business area is AI. The respondents point out that no claim was made in the application that the applicant has a reputation or goodwill in AI in relation to the name INTEL. Their point has force, although the evidence may have been filed to counter the primary respondent’s defence that the interests of the applicant are not adversely affected to any significant extent. The exhibits comprise several articles about the applicant and its ventures concerning AI. All the articles are US-based and there is no indication that they have been seen in the UK, or if they have, by how many of the UK public. In any event, whether or not there is reputation in INTEL in relation to AI goods and services does not affect the outcome of this decision and we do not, therefore, need to go into detail about this evidence.

19. On the basis of the Tribunal’s letter of 25 April 2022, at the relevant date the applicant had a substantial goodwill in the UK, of which INTEL was distinctive, in relation to the computer-related goods and services which it has pleaded in its form CNA1.

The names

20. The name in which the applicant has goodwill and reputation is INTEL. The contested company name is INTELMATIX 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.^{[footnote 9]} The first half of the contested name is identical to INTEL and its presence could, in appropriate circumstances, suggest a brand collaboration, merger or associated undertaking. On the other hand, as the primary respondent says in its counterstatement, ‘intel’ is short for intelligence or information and is not therefore an inherently distinctive component for a company operating in the AI field, the distinctiveness of the contested name then lying in the combination of intel and matix. The less distinctive a name is, the less it is likely to mislead by suggesting a connection between the company and the applicant. On the basis of its pleadings, the strength of the applicant’s goodwill/reputation lies in the list of goods and services it provided in its form CNA1. It does not lie in artificial intelligence goods and services, for which ‘intel’ is far less distinctive. Nevertheless, as the contested company name could be used in any field of trade, including microchips, we will proceed on the basis that the provisions of section 69(1)(b) are satisfied and that the names are sufficiently similar so that the use in the United Kingdom of the contested company name would be likely to mislead by suggesting a connection between the company and the applicant.

Defences

21. The primary respondent specifically pleads reliance upon the defences identified at sections 69(4)(1)(b)(i), (d) and (e) of the Act.

22. The primary respondent’s evidence comes from Bilal Raza, a Director of the primary respondent and from Annie Blake, the respondents’ legal representative.^{[footnote 10]}

Defence (i): that the company is operating under the name (section 69(4)(b)(i))

23. In Certo Construction Limited v Certo Construction (London) Limited, BL O/375/20, the Company Names Adjudicators stated:

33. We are mindful that the wording of the legislation is not clear as to the relevant date for the assessment of the operating defence. The purpose of the provisions of the Act under which this application is brought is to prevent “squatting” i.e. to prevent the registration of a company name by an entity whose main purpose in registering the name is to obtain money (or other consideration) from another party with a reputation under the name, or to prevent that party from registering the name. In particular, the powers set out in sections 69 to 73 of the Act were not intended to provide an alternative remedy to the law of trade marks or the tort of passing off.

34. Following the policy of the Act through to its logical conclusion would suggest that provided a respondent can show that it has traded under the name, (even if that amounted to passing off), that should be sufficient to make out the defence under section 69(4). That remains the case even if the primary respondent started trading after the application in issue was made, provided that trading had commenced, or substantial start-up costs had been incurred, by the time that the primary respondent came to file its Notice of defence. In any event, we will consider the position both at this date and at the earlier date of the application in issue.

24. As referred to in Certo Construction Limited, it is a defence to show that a company has incurred substantial costs in preparing to start trading. It is also a defence that a company was formerly operating under the name (and is now dormant). Neither of these possible defences suggest that trading at the date of the application for a change of name is essential. Section 69(1)(b), which requires that the names are similar enough to mislead by suggesting a connection between the company and the applicant, represents a relatively low, prima facie, hurdle. Commensurately, it is not necessary to apply a high threshold to the prima facie defence that the company is operating under the name; particularly as the applicant may avail itself of the proviso under section 69(5) of the Act.

25. Accordingly, we find that the relevant date for considering the defence pleaded under section 69(4)(b)(i) is 29 March 2022, the date on which the defence form CNA2 and the counterstatement were filed.

26. The primary respondent’s evidence comprises a mixture of undated material, material dating from prior to the application date and also material from after the application date. We note, in particular, the following pieces of evidence which include dates:

• Exhibit BR4: a copy of an article dated 4 August 2021 in a newspaper called Arab News, with a headline: “Riyadh-based AI startup Intelmatix completes first investment round”. The article says that “Intelmatix” had announced on its Twitter account the launch of its operations in Riyadh, London and Boston:

• Exhibit BR5 contains an undated screenprint of a Twitter account page, which says that ‘intelmatix’ joined in July 2021, with 1,028 followers. Although the article above refers to the Twitter account, what is said in the article is that Intelmatix, headquartered in Saudi Arabia, was “pleased to announce the closing and launch of its operations in Riyadh, London and Boston”. That does not appear to equate to the contents of the screenshot below, so it is not certain that this Twitter posting dates from July or August 2021:

• Exhibit BR4: a print from a website of a company called STV, dated 3 August 2021, concerning the investment referred to in the article above. The article says “We are co-leading the first investment round in Intelmatix, a Saudi deep tech startup focused on data intelligence…we are excited to partner with Intelmatix, a company at the forefront of deep tech in Saudi Arabia, with offices in Rihadh, London, and Boston…The company makes data analytics available to a wide range of clients by using hundreds of proprietary and publicly available data sources…Intelmatix is co-founded by a team of PhDs from world-renowned institutions, such as MIT”. Mr Raza states that STV is one of the largest investment companies in the Middle East and North Africa.

• the evidence shows that ‘Intelmatix’ attended an event called GITEX on 17 October 2021.^{[footnote 11]} The evidence does not say that the primary respondent exhibited at GITEX: Mr Raza states that it “attended” the event

• other industry events attended prior to the filing of the defence were MISK Future Leaders (23 December 2021), LEAP (1 February 2022), Alfaisal Anan Alsamaa (24 February 2022), MISK 2030 Leaders (20 March 2022), SDAIA Smart City Accelerator (24 March 2022) and GEC Riyadh (27 March 2022). An undated photograph in Exhibit BR6 shows ‘intelmatix’ displayed in an exhibition booth or stand:

27. Exhibit BR2 contains a screenshot of a WhatsApp group message, made by the co-respondent on 23 September 2018:

28. The domain name, intelmatix.ai, was purchased on the same date.^{[footnote 12]}Neither of these steps shows that the company was operating by the relevant date. Of more relevance is the evidence about engaging the services of legal and corporate advice companies, in Exhibit BR3:

29. These pieces of evidence are dated after the application date but prior to the filing of the defence. In the case of the evidence referring to a meeting dated 16 November 2021, this took place before the primary respondent knew that there was a live application to this Tribunal (although the applicant had provided notice of its intentions on 17 August 2021).

30. We note a bank account report generated on 30 August 2022, months after the date on which the defence was filed.^{[footnote 13]}The report shows that the bank account was set up on 26 January 2022 (assuming that is what ‘onboarding’ means), but that no financial activity took place which indicates that the company was making or receiving payments:

31. Copies of employment contracts are included in Exhibit BR8, issued on 28 April 2022 and 7 July 2022. Screenshots from the primary respondent’s website are shown regarding advertising for staff, dated 16 August 2022. These are all from after the relevant date.

32. We note that the press articles state that the primary respondent has three offices, including one in London. The press articles are not from UK publications and the industry events appear to have taken place in the Middle East. As is apparent from the wording of section 69(5), the main purpose of the provision is to provide a remedy for dealing with the incorporation of companies with abusive or opportunistic names. There is nothing inherently suspicious about the incorporation of a UK company that is operating abroad compared to a company operating in the UK. Therefore, in principle, there is nothing to prevent a defence under s.69(4)(b)(i) from succeeding based on the primary respondent operating under the contested name abroad.

33. However, the wording of section 69(4)(b) requires that it must be the primary respondent, i.e. company number 13518237, which is operating, not another entity using the contested name.^{[footnote 14]} A company which is operating needs a bank account. One was opened on 26 January 2022, but no transactions appear to have taken place. The inference is that the company was not operating in the sense that it was taking business or paying employees. The Twitter post is undated. It could constitute marketing of goods or services which were soon to be available, but without dating it is not certain. It could also constitute an intention to operate in the future, which would not constitute ‘operating under a name’ (as opposed to preparing to do so). The bank account situation has not been explained. The evidence shows endeavours to set up a company so that it will be able to operate, but not actual operation at the relevant date: the bank account without evidence of financial activity, and the employment contracts and employment advertising which post-date the relevant date. The engaging of a firm on 24 January 2022 to advise about setting up operations in the UK must mean that, at that date, there were no UK operations. The primary respondent specifically pleaded the defence under section 69(4)(b)(i): that it is operating. If it wished to rely upon the defence under section 69(4)(b)(ii), that the company is proposing to operate and has incurred substantial start-up costs in preparation, it should have done so in its form CNA2 and counterstatement. In any case, without evidence as to the amount spent on start-up costs, the primary respondent would face an uphill task under 69(4)(b)(ii).

34. The applicant highlights the following from the primary respondent’s written submissions which the latter filed with its evidence:

• paragraph 3: “Although the Respondent is not using the name in a trade mark sense, it has performed a significant level of pre-trading operation in the UK to satisfy S.69(4)(b)(i) of the Act”;

• paragraph 4: “… the Respondent has performed and continues to perform pre-launching operations”; and

• paragraph 25: the primary respondent is “operating under the name with a number of pre-launch activities”

35. Of themselves, the primary respondent’s submissions do not defeat its own defence that it was operating; partly because, as we have said above, “pre-launch activities” could relate to a company that is operating commercially but not yet actually selling goods or services. That said, the respondents’ submissions do not persuade us to take a different view of the evidence. The defence under section 69(4)(b)(i) fails.

Defence (ii): that the company name was adopted in good faith (section 69(4)(d))

36. The relevant date for this defence is the date on which the company name was adopted which, in this case, is the same date as incorporation: 19 July 2021. However, evidence from after that date could cast light backwards to the relevant date.

37. The following principles can be extracted from the judgments of the Privy Council in Barlow Clowes v Eurotrust International Ltd, and the Court of Appeal in England and Wales in Niru Battery Manufacturing v Milestone Trading Ltd:^{[footnote 15]}

(i) Good faith is not displayed by certain kinds of sharp practice which fall short of outright dishonesty or by dishonesty itself: see Niru Battery at paragraph 164.

(ii) There is a combined subjective/objective approach to the honesty of a party’s behaviour. This involves (i) a consideration of what the party knew at the time of a transaction and (ii) how that party’s action would be viewed by applying normally acceptable standards of commercial behaviour: see Barlow Clowes, paragraphs 15 to 18 and 28 to 32.

In company name proceedings, the onus for establishing good faith rests on the respondent(s).^{[footnote 16]}

38. Exhibit BR15 comprises the following image:

39. Mr Raza’s unchallenged evidence is that this exhibit is a grid of the suggestions for a company name, made by people who would subsequently become employees of the primary respondent. Exhibit BR11 comprises some PowerPoint slides showing the genesis of the name, as described in the counterstatement. The last two suffice to illustrate the point made in the counterstatement:

40. The contested company name was one of the suggestions made by the co-respondent (“Anas”). Mr Raza states that the following print from the same exhibit shows the due diligence efforts of the primary respondent prior to adopting its company name:

41. Mr Raza states that the above (undated) print is a report “featuring competitor names to highlight that the Applicant does not appear as a known competitor for Decision Intelligence”.

42. The primary respondent must have been aware of the applicant’s name INTEL, but the evidence shows that it did not consider the applicant to be a competitor. As noted above, there is no evidence that the applicant had goodwill or reputation in the UK, at the time the company name was adopted, specifically in AI: none of its evidence about AI concerns use of its name in the UK prior to July 2021, and there is nothing to suggest that INTEL would nevertheless have been known to the UK public for AI goods and services. As set out in the counterstatement and in the evidence, the primary respondent’s chosen field of business is Artificial Intelligence. Ms Blake has exhibited dictionary definitions which show that ‘intel’ is short for intelligence or information.^{[footnote 17]} In any event, we consider that to be a notorious fact. The primary respondent has stated in its counterstatement that the other part of the contested name, MATIX, is short for ‘informatics’. According to Collins Online Dictionary, ‘informatics’ is another name for information science. The same dictionary defines information science as “the science of the collection, evaluation, organization, and dissemination of information, often employing computers.” This falls within the stated business of the primary respondent on the register of companies: “Information technology consultancy services”. It also describes AI, which the evidence shows is the primary respondent’s actual business. The swapping of an ‘X’ for ‘CS’, which sound identical, is banal and commonplace, much the same as using ‘4’ instead of the word ‘FOR’, or ‘U’ instead of the word ‘YOU’. It can also be seen from the name suggestions grid that all of the suggestions involve an X at the end of the names. We note that ‘Spatialytix’ appears to be a conjunction of ‘spatial’ and part of ‘analytics(x)’, a similar way of creating a name to that used for the contested name.

43. We consider that the evidence shows the genesis of the contested name and establishes what the primary respondent’s motives were in adopting the name. The applicant considers the searches carried out by the primary respondent (which are undated or post-date the relevant date) to be flawed. We do not see that as a strong point in the applicant’s favour. If the primary respondent had not carried out searches, that would still not have been a decisive factor counting against the primary respondent. In company name cases, the importance that can be attached to such an omission will vary (in the range of ‘none’ to ‘some’) depending on all the other facts and circumstances surrounding the adoption of a contested company name. Some weight may be given to a failure to make appropriate enquiries where the respondent’s state of knowledge was such that some investigation of third party rights was called for. The primary respondent in this case must have had knowledge of the applicant and, in view of the meaning of INTEL for the primary respondent’s AI business, the level of expectation as to what searches were necessary must be lower than for names which are not descriptive of a business area. We find that the inspiration for the name is credible and unsurprising: the conjoining of elements of INTEL(LIGENCE INFOR)MATICS, words which are descriptive of the intended business field, whether artificial intelligence or decision intelligence, based on informatics.

44. We note that the date on which the name was adopted/the primary respondent was incorporated, 19 July 2021, was only six weeks before the application was filed to this Tribunal. In our view, there is nothing inherently suspicious about the primary respondent meeting with the corporate and commercial consultants on 16 November 2021 to set up its UK operations under the contested name, which is not long afterwards and, as we have noted, before the primary respondent knew that this application had been filed. The primary respondent continued in its efforts to set up its business after its defence was filed. For the reasons already given, the primary respondent is unable to avail itself of the operating defence. However, it is clear from the evidence that it intended to set up its business in the UK, to operate from the UK, using a name for an AI business for which there is a good and credible explanation and did not consider the applicant to be a competitor. Further, although the contested name has some similarity to INTEL solus, it is far from being a near-identical name. These are not the actions of a party intent on opportunistic registration of a company name or exhibiting reckless disregard for the applicant’s interests in the name INTEL. We therefore find that the defence under section 69(4)(d) succeeds.

Defence (iii): that the interests of the applicant are not adversely affected to any significant extent (section 69(4)(e))

45. The primary respondent only needs to succeed under one of its pleaded defences. However, we will make a brief finding about the third defence, that the interests of the applicant are not adversely affected to any significant extent. The relevant date for this defence is also the date of the filing of the defence form CNA2 and counterstatement as it is phrased in the present tense, as for the operating defence.

46. Given the difference between the names, the aptness of the contested name to describe the business in which the primary respondent now operates, and the absence of evidence that the applicant’s name had a reputation for AI at the date on which the defence was filed, 29 March 2022, we find that the interests of the applicant are not adversely affected to any significant extent. The defence under section 69(4)(e) succeeds.

Outcome

47. The application fails.

Costs

48. The respondents have been successful. 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. The primary respondent requests costs off the scale because the applicant sent a lot of correspondence “outside of the framework”, putting the primary respondent to additional cost, including :

(i) an open letter declaring the applicant will succeed and casting judgments on the defences;

(ii) a failure by the applicant to copy its letter to the Tribunal of 21 April 2022, causing the primary respondent to spend time and money in order to have sight of the letter; and

(iii) the applicant’s submissions that evidence for the procedural hearing be struck out.

49. The scale of costs is there to take account of the varying nature and circumstances of cases. It takes account of levels of costs in proceedings of the same or a similar nature. These proceedings are not unusual. We do not agree with the applicant that its failure to copy the letter of 21 April 2022 to the primary respondent was “a very minor issue”.^{[footnote 18]} However, this is not such unreasonable behaviour that this alone warrants off-scale costs.

50. Nor is the letter sent from the applicant to the primary respondent a reason to award costs, on scale or off scale. Costs can only be awarded for actions taken as part of the proceedings before this Tribunal. Again, letters between parties to a dispute are common and it is not unexpected considering the adversarial nature of proceedings.

51. Finally, the procedural hearing was caused by the primary respondent’s failure to file the defence by the original deadline. It is to be expected, in adversarial proceedings, that the other party may object in anticipation of the potential exercise of the Tribunal’s discretion. The primary respondent should not view its ultimate success at the procedural hearing as a ‘win’. At the procedural hearing, the primary respondent was asked if it sought its costs if successful, to which the answer was that it did not. No costs will be awarded to either side for the procedural hearing.

52. The applicant’s conduct does not amount to unreasonable behaviour in these proceedings. Using the scale, we make the following award in favour of the primary respondent:

Considering the application, filing a defence

and counterstatement £400
Official fee for form CNA2 (defence) £150

Filing evidence, submissions and

considering the applicant’s evidence £1000
Fee for form CNA3 (filing evidence) £150

Total £1700

53. We therefore order Intel Corporation to pay Intelmatix Limited the sum of £1700. The costs are to be paid within 21 days of the end of the period allowed for appeal or, if there is an appeal, within 21 days of the final conclusion of these proceedings (subject to any order of the appellate tribunal).

Appeal

54. 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. The Tribunal must be advised if an appeal is lodged so that implementation of the order is suspended. According to section 74(1) of the Act, there is no separate right of appeal in relation to costs.

Dated 28th March 2023

Judi Pike
Allan James
Stephanie Wilson
Company Names Adjudicators

1. Mr Raza’s and Mr Evans’ witness statements are dated 1 March 2022 ↩

2. Bare Foods Co v Tropical Tang Foods Ltd, BL O767/21, Mr Geoffrey Hobbs QC, sitting as the Appointed Person under sections 76 and 77 of the Trade Marks Act 1994: https://www.ipo.gov.uk/t-challenge-decision-results/o76721.pdf ↩

3. Written submissions dated 17 January 2023. ↩

4. Botanica Agriculture and Extraction Limited v Botanica Limited [2022] EWHC 2957 (Ch) and MB Inspection Ltd v Hi-Rope Ltd [2010] RPC 18. ↩

5. Anyone who saw the mark used in relation to computers or computer-linked products or services would take it as denoting a trade connection with the applicant”. ↩

6. Witness statement dated 20 June 2022. ↩

7. Witness statement dated 1 December 2022. ↩

8. Witness statement dated 15 June 2022 and exhibits. ↩

9. See the decision of the adjudicators in MB Inspection Limited v Hi-Rope Limited, [2010] RPC 18 ↩

10. Respective witness statements dated 12 September 2022, with exhibits; and 13 September 2022, with exhibits. ↩

11. We have not taken into account the description of GITEX given by Ms Blake in her written submissions because she did not include this in her witness statement. An explanation about what GITEX does is factual and is not appropriate for submissions. ↩

12. Exhibit BR2, page 29. ↩

13. Exhibit BR3. ↩

14. Zurich Insurance Company v Zurich Investments Limited, BL O/197/10, [2011] RPC 6. ↩

15. [2005] UKPC 37 and [2003] EWCA Civ 1446. ↩

16. See In and Out Hotel Limited BL O/121/19. ↩

17. Exhibit AB2: one of which is from Collins Online Dictionary; the other is from Merriam-Webster Dictionary. ↩

18. Applicant’s submissions in lieu of a hearing, paragraph 38, 17 January 2023. ↩