NOCN (formerly National Open College Network) v Open College Network Credit4learning
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Hacon,Judge Hacon |
| Judgment Date | 25 September 2015 |
| Neutral Citation | [2015] EWHC 2667 (IPEC) |
| Docket Number | Case No: IP-2014000063 |
| Court | Intellectual Property Enterprise Court |
| Date | 25 September 2015 |
[2015] EWHC 2667 (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: IP-2014000063
Jessie Bowhill (instructed by Virtuoso Legal) for the Claimant
James St Ville (instructed by Geoffrey Leaver Solicitors LLP) for the Defendant
Hearing dates: 16–17 July 2015
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.
Background
Since the 1980s a number of organisations across the country have been set up to encourage the development of routes to higher education for adults, other than via 'A' levels. The organisations have become known as 'open college networks'.
This promotion of higher education among adults who did not take it up after leaving school is achieved in three ways. First, courses run by adult further education colleges or an employer's training department are accredited by open college networks. The education and/or training offered and the testing required in order to obtain qualifications are vetted by the open college network concerned in conjunction with the Quality Assurance Agency for Higher Education, an independent body entrusted with advising on standards and quality in higher education in the UK. If approved, the courses and qualifications are accredited as having met a published standard. They are then recognised by universities and other providers of higher education as a means of access to those institutions.
Secondly, open college networks have developed a system for recognising units of training or education completed by adults. The units may have been provided by different employers or colleges. The system which has been developed, this time in conjunction with another independent body – the Qualification and Curriculum Agency, allows an individual to claim cumulative credit for a number of units, again as a means of access to higher education.
Thirdly, open college networks by themselves provide bespoke accreditation to learning programmes unique to one college or employer.
All open college networks operate in a particular region of the United Kingdom. In 1987 a national body was set up to co-ordinate the activities of these local organisations. This was the predecessor of the Claimant, which was given the name 'National Open College Network'. The predecessor was formally constituted as the national body for open colleges in 1991 and registered as a charity. Most, though not all open college networks around the country were affiliated to the Claimant's predecessor. The predecessor specified assessment criteria for national qualifications, subject to approval by the government regulator.
In February 1999 the Claimant was incorporated and it inherited the functions of its National Open College Network predecessor.
The Defendant is an open college network. It is the product of successive amalgamations of four regional open college networks. All four became affiliated to the Claimant's predecessor in the period up to February 1999. After the incorporation of the Claimant in that month all of them entered into a membership agreement with the Claimant. Over a period between September 2001 and July 2005 came the succession of mergers between the Defendant's predecessors. The Defendant itself emerged as the product of one of these mergers in March 2003 and later mergers with it resulted in the Defendant in its present form in July 2005. At this stage it was still a member of the Claimant.
In May 2006 following disagreements between the Claimant and Defendant the membership agreement between them came to an end. There followed a series of disputes by correspondence culminating in these proceedings. At the core of the dispute is the question whether the Defendant is entitled to style itself an 'OCN' having relinquished membership of the Claimant's organisation.
The rights in dispute
Trade marks
The Claimant is the owner of a number of trade marks ("the Claimant's Trade Marks"):
(1) UK trade mark no. 2,317,870 for the letters 'OCN' ("the OCN Mark");
(2) UK trade mark no. 2,317,869 for the letters 'NOCN' ("the NOCN Mark");
(3) Ten UK registered trade marks (which I need not distinguish), each of which consists either of 'nocn' (in one case) or 'ocn' (in the remaining instances) together with a national or regional designation and a 'swoosh' device ("the Swoosh Marks"). An example is the Eastern Region Swoosh Mark, UK registered trade mark no. 2,578,769:
It was not in dispute that all of the Claimant's Trade Marks are registered in relation to, among other things, services provided by the Defendant.
The Claimant complains that the Defendant has traded under the (i) the name OCN, (ii) the name OCN Credit4Learning, (iii) the domain name 'ocncredit4learning. com' ("the Defendant's Domain Name") and (iv) the following logo ("the Defendant's Logo"):
The Claimant alleges that the Defendant has thereby infringed each of the Claimant's Trade Marks.
The Defendant denies infringement and counterclaims for a declaration that the OCN Mark and the Swoosh Marks be revoked, by the time of the trial on the following grounds:
(1) The Defendant was the proprietor of earlier rights arising from the use of 'OCN' in respect of (a) the name OCN itself and (b) signs similar to the Swoosh Marks ("the Swoosh Signs") at the time the OCN Mark and Swoosh Marks respectively were registered, such that their use was at all times liable to be prevented by the Defendant by virtue of the law of passing off. Those Marks are therefore invalidly registered pursuant to ss.5(4)(a) of the Trade Marks Act 1994 ("the Act").
(2) The OCN Mark at the time it was registered consisted exclusively of a sign or indication which had become customary in the current language or in the bona fide and established practices of the trade, contrary to s.3(1)(d) of the Act.
(3) The Swoosh marks were applied for in bad faith contrary to s.3(6) of the Act.
In relation to the Defendant's counterclaim under s.3(1)(d) of the Act, aside from denying the allegation the Claimant alleges in the alternative that since registration the OCN Mark has acquired distinctive character.
The Claimant also contends that the Defendant is entitled neither to (a) seek revocation of the OCN Mark nor (b) oppose the use of the OCN Mark since, as proprietor of an alleged earlier right (if there was one), the Defendant acquiesced for a continuous period of five years in the use of the OCN Mark in the United Kingdom, being aware of that use. See s.48(1) of the Act.
For its part, the Defendant runs three further defences:
(1) The Defendant used in the course of trade, in a particular locality, earlier rights which applied only in that locality, see s.11(3) of the Act. The earlier rights in question were derived from the use of 'OCN' in the regions of the UK in which the Defendant's predecessors operated at the date of registration of the OCN Mark. The Defendant contends that the use of those earlier rights was protected by virtue of the law of passing off.
(2) The Claimant is estopped from enforcing any rights it may have against the Defendant by reason of its delay in doing so and thereby creating an implicit representation that it had no objection to the Defendant's acts complained of. I will refer to this as 'the common law estoppel defence'.
(3) If the Claimant is right in its contention under s.48(1) of the Act, the Claimant may not oppose the Defendant's use of the 'OCN' trade name, see s.48(2) of the Act.
Passing off
The Claimant claims ownership of goodwill in its business, which goodwill it says is associated with each of (i) the letters OCN, (ii) the letters NOCN and (iii) the Claimant's Swoosh Mark, which takes the following form:
The Claimant alleges that the Defendant is liable for passing off by reason of its trading under (i) the name OCN, (ii) the name OCN Credit4Learning, (iii) the Defendant's Domain Name and (iv) the Defendant's Logo.
The Defendant denies passing off and pleads in the Re-Amended Particulars of Claim that it, along with other OCNs, owns the goodwill associated with the name OCN and its Swoosh Marks.
The Defendant also advances the following further defences in line with equivalents being relied on in the context of trade mark infringement:
(1) a common law defence of estoppel; and
(2) an entitlement to use the OCN trade name pursuant to s.48(2) of the Act if the Claimant is entitled to rely on s.48(1) of the Act.
The history of the goodwill
Central to the issues in this case is how goodwill associated with the name 'OCN' came into being and what happened to its ownership. A number of points need to be clarified to begin with.
First, it was not in dispute that goodwill is capable of subsisting in a business which consists of educational and charitable work of the sort carried on by the Claimant, the Defendant and other open college networks – as opposed to trading in the usual way. See British Diabetic Association v The Diabetic Society [1996] FSR 1, for example, in relation to charities. In this judgment I will use the terms 'business' and 'trading' in a loose sense to encompass the activities of the parties in this case.
Secondly, it was no part of the Claimant's pleaded case that it sought or had any right to prevent the Defendant styling itself as an 'open college network'. During argument Ms Bowhill, who appeared for the Claimant, said at one point that the Claimant might object if the...
To continue reading
Request your trial