Monopolising a fund’s brand name: trade mark clearance and registration on fund establishment

What’s in a fund name?  Rather a lot, if you cannot keep it.

A new fund arrives in the world trailing a myriad of structuring, regulatory and tax questions: the domicile, the GP, the management entity, the carry vehicle, the limited partnership agreement, the offering memorandum, the FCA regulatory perimeter.  Somewhere in and amongst them a name is chosen.  The name will sit on every one of those documents, on every subscription booklet put in front of every investor, and – if things go well – on the successor vintages that carry the track record.  It deserves better than ten minutes and a Companies House search.

The thoughts below began life as an annex to our fund establishment proposals, which is where the question usually first gets asked.

Only trade marks confer the monopoly

The principal means by which to monopolise the use of a fund’s brand name – and the names of the legal entities behind it – is the registered trade mark, and likely more than one.  A registered trade mark is an exclusive right to a brand – a word, name, phrase, logo or symbol – for particular classes of goods and services within a given territory, including the right to prevent others using it.  For a fund manager, the relevant services are the investment management and advisory services supplied under the name; and one brand typically sits across a family of entities – the fund itself, the GP, the management vehicle, the carry partnership.

It is important to note that the mere incorporation of the GP or the management entity under a particular corporate name, or the registration of a domain name embodying that name to use a domain embodying that name, does not of itself confer on the owner any trade mark monopoly rights whatsoever.  Trade marks signal the origin of goods and services supplied in the marketplace, and mere use of a company name, or mere ownership of a domain, is not use as a trade mark.  The common law of passing off may protect goodwill built up through trading, but goodwill takes time to accumulate and to evidence, which is precisely what a first-time manager does not have.

Defensively: the risk of being sued

The risks of being sued for use of a name – as the name of the fund, of the legal entities behind it, and for the supply of services under that name – should be prudently assessed before commitment to the name, in all territories in and into which the fund and its entities propose to or may supply services.  Grounds for threats of suit, under the laws of each territory, territory by territory, include alleged registered trade mark infringement, common law passing off and, where local law provides for it, statutory or common law unfair competition.

For a fund, the list of territories is usually written by the placement plan before it is written by the portfolio.  A private placement into the United States, Asia or the Middle East projects the name into each of those territories before a single investment has been made.

Elevated risks of being sued would prudently trigger consideration of switching from that name and choosing a different one carrying less risk of adverse suit.  The point is illustrated by the fate of RED DAWG Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch), Adam Johnson J.  Monster Energy’s application to register that mark for drinks including energy drinks was successfully opposed by Red Bull on the strength of the reputation in RED BULL and without any evidence that Monster subjectively intended to take advantage of it.  Popular marks can enjoy a very extensive penumbra of protection, and an opponent does not need to show that you meant any harm.

Offensively: the prospects of monopolising

Equally, the prospects of successfully applying to monopolise the right to use of a name for particular classes of goods or services, territory by territory, to the exclusion of others seeking lawfully to use that name or similar names, should be prudently assessed before commitment.  Monopolies, territory by territory, are secured by applications for, through to registrations of, trade marks in the registries of those territories.

There is a trade-off here that deserves to be stated plainly.  Powerful names are more valuable, and so more deserving of efforts to monopolise; but the difficulties and costs attaching to monopolising powerful names, by overcoming the objections of others, are likely to be greater.  Less powerful names attract less opposition precisely because they are less worth having.

No wide-claiming: the monopoly must be honest

It was once common practice to claim as broadly as the registries would allow, on the theory that a wider specification meant a wider monopoly; the temptation for a new manager is to claim the whole of financial services and much besides.  The Supreme Court called time on that practice in SkyKick UK Ltd v Sky Ltd [2024] UKSC 36.  Sky’s registrations, which extended to goods as remote from broadcasting as ‘bleaching preparations’, were held partially invalid: an application made without genuine intention to use the mark across the breadth of the specification, and without commercial rationale for it, may be an application made in bad faith under section 3(6) of the Trade Marks Act 1994, and the registration cut down accordingly.

The UK Intellectual Property Office has since amended its examination practice.  Under Practice Amendment Notice 1/25, issued on 27 June 2025, examiners will now raise bad faith objections of their own motion where a specification is manifestly and self-evidently broad, with the applicant given two months to explain the commercial rationale.  For a new manager the lesson is a happy one: claim the investment management and advisory services the business genuinely intends to supply, or genuinely intends to explore, and the new practice costs you nothing.  The specification should track the fund’s business plan, not the dictionary.

Nor does registration end the matter.  A registered trade mark must be put to genuine use within five years of registration, and for continuous five-year periods thereafter, failing which it becomes liable to revocation for non-use at the suit of a competitor.  A monopoly is kept the same way it is won: by trading under the name.

The territorial map, after Brexit

Trade marks are territorial.  A UK registration is enforceable in the UK only; an EU registration in the EU only; a US registration in the USA only; and so on, territory by territory.  Since the end of the Brexit transition period, a UK registration is obtained from the UK Intellectual Property Office, and a single application to the European Union Intellectual Property Office covers the 27 member states – no longer including the UK.  For wider coverage, a single international application under the Madrid system, filed through the World Intellectual Property Organization, can designate multiple territories at a fraction of the cost of separate national filings, with direct national applications available for territories outside that system.

Searches before commitment

Availability searches against existing registrations should be obtained in respect of all major territories in or into which use of the name is proposed to be projected.  Search results should identify identical and similar marks already registered at the registries of the territories searched, infringement of which by the selected name appears to be an elevated risk.  ‘Common law searches’ can also be carried out in selected territories to identify existing users of the selected name, or similar names, who may have established through use prior adverse rights which are not registered and which are still potentially enforceable.  In any event, searches on Google to see who is already trading by use of a name, or similar names, in the marketplace are strongly recommended, and cost nothing.

What it costs

The cost of obtaining search results depends on the number of classes of goods and services searched, and on prices which differ territory by territory.  The costs of filing, including registry fees, depend on the number of marks applied for, the number of classes in which monopoly by registration is sought, and the number of territories.  Quoted costs assume a straightforward prosecution through to registration; the costs of overcoming substantial objections from a registry, or of defending opposition proceedings brought by other traders, come in addition.  Which is a further reason to choose a name unlikely to attract either.

Operating without a monopoly

Launching a fund, and legal entities with it, under a particular name which is then attacked successfully by the owner of prior registered or unregistered rights in that name – and then having to change the name, or electing to change it to avoid a costly and uncertain legal battle – can be at best embarrassing and at worst very costly.  By then the name sits in the limited partnership agreement, the offering memorandum, the side letters, the regulatory arrangements and the subscription documents; and it is the name under which the track record is being built.  Successor vintages inherit the problem: the name that must change is also the name that was to carry Fund II’s placing story.  Prior rights disputes are, moreover, exactly the sort of thing that investor due diligence turns up at the least convenient moment.

In and amongst the myriad of structuring, regulatory and tax questions on fund establishment, some thought should be given at the outset to selecting a defensible name around which a monopoly can be built – honestly specified, properly searched, and registered territory by territory.  A stitch in time saves nine.

This piece was contributed by Robert Humphreys and Tristan Morse.  Do please reach out to a member of the team if you would like to discuss trade marks on fund establishment, or anything involving intellectual property for that matter.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice and is not to be relied upon.  Much of the above will no doubt fall out of date and conflict with future law and practice one day.  None of the above should be relied upon.  Always seek your own independent professional advice.

Humphreys Law