Decision Nº O/632/21 from Intellectual Property Office - (Trade market), 25 August 2021
| Judge | Mr A James |
| Administrative Decision Number | O/632/21 |
| Registration Number | UK00003357627, UK00003415075 |
| Court | Intellectual Property Office (United Kingdom) |
| Date | 25 August 2021 |
O/632/21
TRADE MARK APPLICATION No. 3415075
BY GEORGE COOK AND GEORGE SPOONER, THE PARTNERS IN
OXBRIDGEIQ
AND
OPPOSITION No. 418255
BY OXBRIDGE LIMITED
AND
APPLICATION No. 503253
BY GEORGE COOK AND GEORGE SPOONER, THE PARTNERS IN
OXBRIDGEIQ
FOR A DECLARATION THAT TRADE MARK No. 3357627 IS INVALID
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Background and pleadings
1. Oxbridge Limited (“OL”) relies on two existing registered trade marks consisting of,
or including, the word ‘OXBRIDGE’ to oppose a trade mark application filed on 18th
July 2019 by George Cook and George Spooner, the partners in OxbridgeIQ (“IQ”).
They applied to register the following mark in relation to “Tutoring” services in class
41.
2. OL claims that ‘Oxbridge’ is distinctive of the educational goods and services for
which the earlier marks are registered, and that use of the contested mark will create
a likelihood of confusion with its earlier marks. This is an unusual case because OL
accepts that OXBRIDGE is a portmanteau word that has been used for many years to
collectively describe two other high very profile providers of educational services;
namely, Cambridge and Oxford Universities. Indeed, OL relies on OXBRIDGE
indicating the trade origin of services provided by these universities to resist a counter
application brought by IQ to invalidate OL’s word-only OXBRIDGE mark on the basis
that it is was descriptive, non-distinctive, or in customary use, when it was registered
in 2018.
3. The main details of OL’s case for opposing IQ’s application are as follows:
(a) Trade mark 3163319 was applied for on 6th May 2016 and registered on
11th November 2016;
(b) The mark covers, inter alia, “education” in class 41;
(c) The mark looks like this ;
(d) The respective services are identical;
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(e) The word OXBRIDGE is the dominant and distinctive element of both the
contested mark and the earlier mark, the device of a teaching board and the
letters ‘IQ’ in the contested mark being descriptive, and the other elements of
the earlier mark being secondary in impact and importance to OXBRIDGE;
(f) Trade mark 3357627 was applied for on 30th November 2018 and registered
on 10th April 2020;
(g) The mark covers, inter alia, “Distance learning services” and “education
services provided remotely;”
(h) The mark consists of the word OXBRIDGE;
(i) The respective services are identical or highly similar;
(j) The word OXBRIDGE is the dominant and distinctive element of the
contested mark and the only element in the earlier mark;
(k) The word OXBRIDGE used in the respective marks has “essentially the
same or a very similar meaning” (OL’s pleading in the opposition proceedings
is silent about what this meaning is);
(l) The relevant public will believe that the contested mark is a sub-brand used
by the user of the earlier marks.
(m) There is a likelihood of confusion on the part of the public, including the
likelihood of association;
(n) Registration of IQ’s mark would therefore be contrary to s.5(2)(b) of the
Trade Marks Act 1994 (“the Act”).
4. IQ filed a counterstatement denying the grounds of opposition. I note that IQ:
(a) Admitted that the respective services are identical or highly similar;
(b) Denied that OXBRIDGE, rather than the stylised OX logo, is the dominant
and distinctive element of earlier trade mark 3163319;
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