Passing Off Action Fails

In the case of Cranford Community College v Cranford College Ltd the claimant (CCC) was a private limited company, operating a state secondary school in Cranford. It was formerly known as 'Cranford Community School' and changed its name in 1997 to 'Cranford Community College'. The defendant (CCL) was a privately owned educational establishment that was also located in Cranford. CCL traded as 'Cranford College' and had also referred to itself in advertising as 'Cranford Academy'.

CCL was the registered proprietor of two United Kingdom trade marks which included the name 'Cranford College'. CCC brought proceedings alleging passing off against CCL in respect of CCL's use of the names 'Cranford College' and 'Cranford Academy', as well as CCL's company name, domain names and logos. CCL denied any intent to deliberately pass itself off as CCC and contended that the CCC names were descriptive and therefore provided no basis for an action of passing off. CCC relied, among other things, on goodwill in its educational services since 1997 in the CCC names. It further sought, among other things, a declaration that the CCL trade marks had been invalidly registered and should be assigned to the claimant. 

The issues for consideration were:

  1. Whether CCC actually owned goodwill associated with the name 'Cranford College' or with one or more of the CCC logos;
  2. Whether CCL's use of one or more of the CCL names and/or the CCL logo amounted to a misrepresentation on the part of CCL that it was CCC or otherwise associated with CCC in the provision of educational services;
  3. Whether, in consequence, CCC's goodwill had suffered damage; and
  4. Whether a declaration should be granted that the CCL trade marks had been invalidly registered and whether they should be assigned to the claimant.

The claim would be dismissed for the following reasons.

(1) For the purpose of the present proceedings, CCC had to show that it owned goodwill associated with the name 'Cranford College'. That had not been proved on the evidence. Further, there was no evidence that the public identified its goods or services by reference to the logo, rather than the trade name, to such an extent that the claimant had significant goodwill associated solely with the logo.

(2) It had long been established that a trade name which was descriptive in its literal meaning might be protected by the law of passing off if it had acquired a secondary meaning so that in the relevant market, it had come to distinguish the claimant's goods or services from those of other traders. It was possible for a trader to protect goodwill associated with a name which was, in part, descriptive, provided the whole trading name was capable of distinguishing his goods or services. However, in such a case, a defendant might still avoid ‘passing off’ by using a trade name which differed only in minor detail from that of the claimant. The matters relied on by CCC were not sufficient for the court to believe that CCL had any intent to deliberately pass itself off as CCC. On the evidence, no misrepresentation had been established in respect of the logos. Accordingly, there was no likelihood of a misrepresentation by CCL. CCC did not own a goodwill of a nature such that a misrepresentation could arise

(3) There had been no evidence of damage. Even if damage had occurred, it could not be taken into account where there had been no misrepresentation

(4) There were no grounds for revoking the CCL trade marks or requiring CCL to assign any of its rights

This decision just goes to show how difficult it can be to succeed in a claim for passing off. Although a claim for Trade Mark infringement can also face difficulties, it provides a far more robust protection. Larger businesses should always give serious consideration to Trade Marking their name and logo.

 

Oliver Kew

Published on 25/09/2014

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