Trademark

Infringement – Passing off – Use of similar trademark – Likelihood of confusion

University of Oxford v Oxford Law School Ltd: Intellectual Property Enterprise Court: 11 December 2013

The claimant was a lay corporation, which constituted the world-famous Oxford University. It was first established at common law by custom and later incorporated in 1571. Its faculty of law operated under the name ‘Oxford Law’. The defendant was a company incorporated in February 2012 which traded under the name ‘Oxford Law School’. It offered short-term tuition for courses administered by separate professional regulatory bodies. The claimant sought to establish a Community trademark infringement under article 9(1)(b) or 9(1)(c) of Council Regulation (EC) 207/2009 (the Regulation) (on the Community trademark).

The claimant also sought to establish an infringement of its UK registered trademarks under sections 10(2) or (3) of the Trade Marks Act 1994 (the 1994 act). The claimant brought proceedings seeking injunctive relief, under article 102(1) of the Regulation, and orders that the defendant transfer ownership of the domain name ‘www.oxfordlawschool.co.uk’ and change its registered company name to no longer include ‘OXFORD’ or any confusingly similar name.

The claimant submitted that there was a high degree of visual, aural and conceptual similarity and a likelihood of initial interest confusion and actual confusion between the parties’ signs. The claimant also submitted that the defendant had been taking advantage and/or causing detriment to the distinctive character of the claimant’s registered trademarks. Finally, the claimant submitted that the necessary elements of passing off were satisfied. The defendant submitted that the 1994 act required the use of a trademark to be identical for an infringement to occur. The defendant submitted that it had no knowledge of how the claimant was established, and that its services had been wholly and substantially different from the claimant’s which had operated in different markets.

The application would be allowed.

In the circumstances, there was an infringement of the claimant’s registered UK and Community trademarks. Given the very high degree of visual, aural and conceptual similarity between the parties’ signs, there was a strong likelihood of initial interest and actual confusion by the average consumer. Although the parties generally operated in slightly different markets and did not compete with each other, the average consumer would not have considered the differences sufficient to distinguish the services.

The defendant’s sign took unfair advantage of, and was detrimental to, the distinctive character and repute of the claimant’s trademarks. In respect of the passing-off claim, the claimant had established that the use of the defendant’s sign took unfair advantage of, and was detrimental to, the distinctive character and repute of the claimant’s trademarks. The claimant had an established and historic worldwide reputation. The defendant was making a misrepresentation to the public so as to lead them to believe that the services were either those of the claimant or associated with, approved, authorised or endorsed by the claimant. There was a strong likelihood of deception. The claimant was likely to suffer genuine and substantial damage to its reputation and goodwill by reason of the material misrepresentation (see [70], [71], [73], [76]-[78], [83], [84], [91],[97], [98], [104], [112], [115] of the judgment).

There had been an infringement of the claimant’s registered UK and Community trademarks under article 9(1)(c) of the Regulation and section 10(3) of the 1994 act and the claimant would be granted an injunction under article 102(1) of the Regulation (see [100], [127] of the judgment).

Lloyd Schufabrik Meyer v Kliysen Handel [1999] E.T.M.R. 690  applied; LTJ Diffusion SA v Sadas Vertbaudet SA: C-291/00 [2003] All ER (D) 297 (Mar) applied; Intel Corp Inc v CPM United Kingdom Ltd: C-252/07 [2008] All ER (D) 277 (Nov) applied; Och-Ziff Management Europe Ltd v Och Capital LLP [2010] All ER (D) 07 (Nov) applied; Interflora Inc v Marks and Spencer plc: C-323/09 [2011] All ER (D) 169 (Oct) applied; Specsavers International Healthcare Ltd v Asda Stores Ltd: C-252/12 [2013] All ER (D) 355 (Jul) applied; Office Cleaning Services Ltd v Westminster Windows and General Cleaners Ltd [1946] 63 RPC 39 distinguished.

Chris Aikens (instructed by Sipara Limited) for the claimant; The defendant appeared by his representative.