Cranford Community College v Cranford College Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Hacon,Judge Hacon |
| Judgment Date | 19 September 2014 |
| Neutral Citation | [2014] EWHC 2999 (IPEC) |
| Docket Number | Case No: CC13P04105 |
| Court | Intellectual Property Enterprise Court |
| Date | 19 September 2014 |
[2014] EWHC 2999 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: CC13P04105
Ian Silcock (instructed by Winckworth Sherwood LLP) for the Claimant
Jonathan Hill (instructed by Chauhan Solicitors) for the Defendant
Hearing dates: 22–23 July 2014
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
The Claimant ("CCC") is a private limited company which operates a state secondary school in the London Borough of Hounslow ("LBH"). The school has been in existence since 1975, formerly under the name 'Cranford Community School' and since 1997 'Cranford Community College'.
Cranford is the name of the part of west London in which the school is located. For the locals Cranford consists of an area that broadly corresponds with the LBH council ward of that name.
The Defendant ("CCL") is a privately owned educational establishment which offers courses for students of post-school age. It was incorporated on 25 June 2010 and its first student was enrolled in October 2011. To date the students have come from outside the United Kingdom although there is no reason why students from this country could not attend. CCL trades as 'Cranford College' and has also referred to itself in advertising as 'Cranford Academy'. It is located about 500 metres from CCC as the crow flies, about 800 metres to walk, and is also in Cranford.
CCC has brought proceedings for passing off against CCL. CCC relies on goodwill in its educational services since 1997 associated with the following three names ("the CCC Names"):
(1) 'Cranford Community College',
(2) 'Cranford College' and
(3) 'Cranford'.
In addition CCC relies on goodwill associated with the following logos used by CCC since the dates indicated ("the CCC Logos"):
These all have a crane motif because, I was informed, the name 'Cranford' is derived from the Anglo Saxon for 'ford frequented by cranes' (and could easily have been derived from the English).
CCC complains about the CCL's use of the names 'Cranford College' and 'Cranford Academy', its company name 'Cranford College Limited' and CCL's domain names 'cranfordcollege. com', 'cranfordcollege.co.uk' and 'cranfordacademy. com' (collectively "the CCL Names"). CCC also complains about CCL's use of the following logo ("the CCL Logo"):
The bird is apparently a pigeon.
CCL is the registered proprietor of two United Kingdom trade marks ("the CCL Trade Marks"), namely (i) UK Trade Mark no. 2591850 which is in the form of the CCL Logo shown above and (ii) UK Trade Mark no. 2657449 which takes the form of another logo:
CCC seeks a declaration that the CCL Trade Marks were invalidly registered on the alternative grounds that the registrations were in breach of s.5(4)(a) of the Trade Marks Act 1988 or s.3(6) of that Act.
CCC also alleges that CCL's company name, its domain names and its trade marks are instruments of deception. CCC seeks an order that the company name should be changed and that the domain names and trade marks should be assigned to CCC.
Passing Off
Attention at the trial was primarily focussed on the allegation of passing off and mostly on the name 'Cranford College' for reasons that made sense and which I will discuss below.
The law
CCC advanced its case based on the conventional approach to a passing off action, that is to say that it was obliged to establish
(a) goodwill in its services associated in the mind of the relevant public with one or more of the CCC Names and/or the CCC Logos such that they are recognised by the public as distinctive of CCC's services;
(b) that CCL's use of one or more of the CCL Names and/or the CCL Logo gave rise to a misrepresentation on the part of CCL that it was CCC or otherwise associated with CCC in the provision of educational services; and
(c) that in consequence CCC's goodwill had suffered damage.
See Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491.
It was not disputed by CCL that although the law of passing off is primarily concerned with goodwill in the business of a trader, it may be relied on to protect goodwill enjoyed by non-traders such as a charity ( British Diabetic Association v The Diabetic Society [1996] FSR 1), a church ( Old Apostolic Church of Africa v Non-white Old Apostolic Church of Africa 1975 (2) S.A. 684, a South African case approved by Robert Walker J in the British Diabetic case) or a political party ( Burge v Haycock [2001] EWCA Civ 900; [2002] RPC 28). I agree and see no reason why the same protection should not extend to a school in the state sector. (A school in the private sector trades in the conventional sense).
It was also common ground that whether or not CCL was passing off had to be assessed as of the first date of its conduct complained of (see Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429). Mr Hill, who appeared for CCL, submitted that this was February 2011 when CCL's website went live. Mr Silcock, who appeared for CCC, accepted this.
Descriptive names
One of the principal grounds of defence relied on by CCL was that the CCC Names were descriptive and therefore either they provided no basis for an action of passing off at all, or if they did, even minor differences in the trading style used by CCL were enough to afford a defence. It was said that 'Cranford College' describes literally what it is: a college in Cranford. It was submitted that 'Cranford' by itself is even more descriptive and CCC was attempting to monopolise the name of the locality for all educational services. Finally, the word 'Community' was a generic sort of word which added nothing by way of distinctiveness. Mr Hill referred me to Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 and Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244; [2007] RPC 5.
It has long been established that a trade name which is descriptive in its literal meaning may be protected by the law of passing off if it has acquired a secondary meaning so that in the relevant market it has come to distinguish the claimant's goods or services from those of other traders, see Reddaway v Banham [1896] AC 199.
Separately from this, it is possible for a trader to protect goodwill associated with a name which is in part, even in large part, descriptive, provided the whole trading name is capable of distinguishing his goods or services. However in such a case a defendant may avoid passing off by using a trade name which differs only in minor detail from that of the claimant. The classic case in point is Office Cleaning in which the Respondents' 'Office Cleaning Association' trade name differed sufficiently from 'Office Cleaning Services' used by the Appellants for there to be a finding of no passing off. Lord Simonds, with whom Lord Wright, Lord Porter and the Lord Chief Justice, Lord Goddard, all agreed, said this (at pp.42–43):
"Foremost I put the fact that the Appellants chose to adopt as part of their title the words 'Office Cleaning' which are English words in common use, apt and more apt than any other words to describe the service that they render. … So it is that, just as in the case of a trade mark the use of descriptive words is jealously safeguarded, so in the case of trade names the Courts will not readily assume that the use by a trader as part of his trade name of descriptive words already used by another trader as part of his trade name is likely to cause confusion and will easily accept small differences as adequate to avoid it. It is otherwise where a fancy word has been chosen as part of the name. Then it is that fancy word which is discriminatory and upon which the attention is fixed, and if another trader takes that word as part of his trade name with only a slight variation or addition, he may well be said to invite confusion. For why else did he adopt it?
…
So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be. … It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered."
One way of interpreting this ruling is that it is really a statement of policy: if the claimant chooses to use trade name of a significantly descriptive nature, a greater degree of confusion will be allowed. In effect, a bit of passing off will be tolerated – or rather, a certain level of confusion which would have resulted in passing off had the claimant used a 'fancy' trade name will not be actionable when the trade name is largely descriptive. This is desirable and necessary to avert the unfair monopolisation of descriptive words.
This would imply a 'carve-out' or special defence to the usual rules of passing off. A difficulty with this interpretation is that it also implies an awkward difference in threshold when it comes to assessing whether a substantial proportion of the relevant public have been led by the defendant's...
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