Regent University v Regent's University London
| Jurisdiction | England & Wales |
| Judge | Mr. Recorder Alastair Wilson |
| Judgment Date | 06 September 2013 |
| Neutral Citation | [2013] EWPCC 39 |
| Court | Patents County Court |
| Docket Number | Case No: CC13P01973 |
| Date | 06 September 2013 |
[2013] EWPCC 39
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr Recorder Alastair Wilson QC
(Sitting as a Judge of the Patent County Court)
Case No: CC13P01973
David Wilkinson, Solicitor Advocate, for the Claimant
Simon Malynicz, of Counsel, for the Defendant
Hearing date: 31 July 2013
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.
Mr. Recorder Alastair Wilson QC:
This is an application by the Defendant for the stay of a Community Trade Mark infringement action, pending the outcome of revocation proceedings relating to the relevant mark, which were started in OHIM by the Defendant shortly before this action was started.
The Claimant opposes the application for a stay, and ripostes in the now conventional way with applications to expedite the action or, if a stay is granted, for "provisional and protective measures" while the stay is in force.
The Claimant is an American university based in Virginia, founded by a well-known Christian evangelist called Pat Robertson in 1978. It was originally known as CBN University, but changed its name to Regent University in 1989. It provides a wide range of undergraduate and graduate courses, and in August 2012 had approximately 16,000 alumni. The Claimant runs conventional academic courses, but as its website makes clear, it aims to provide educational services in a strongly Christian context. In addition to its main campus in Virginia, the Claimant offers international study programs in the UK, France, Italy and Israel. In May 2013, according to a witness statement of Louis Isakoff, its Vice-President and General Counsel, the Claimant committed itself to a "significant investment" in Massive Open Online Courses (or "MOOCS"), which will allow students outside the US to enrol in online courses, and "in due course, full programs of academic study". Although this evidence was criticised by Mr. Malynicz (who appeared for the Defendant) it is apparent from the evidence before me that MOOCS are a natural field for any university to enter, particularly, perhaps, one with a strong evangelical tradition, and I see no reason to ignore this evidence. On the other hand, I also note that at the present time, of its total 16,000 students in the USA, only 51 come from the EU (some of them being online students), and the evidence does not demonstrate one way or the other how much interest is likely to be generated in Europe for the Claimant's MOOCS.
The Defendant is one of two private universities in the UK (the other being the University of Buckingham). It has only recently achieved that status, but has been established as an institution since 1984 at its campus on the Inner Circle of Regent's Park, in London. Until April this year, when it changed its name to Regent's University London, it had been known as Regent's College (occasionally and colloquially abbreviated in some of the material I have seen as "Regent's"). It consisted of seven distinct schools, six of which had names incorporating the word "Regent's", such as "Regent's Institute of Language and Culture" or "Regent's American College London". (The American connotation of the last mentioned school is emphasised by the fact that Regent's College itself was originally established in 1984 as an outpost of Rockford College Illinois, and by its close links with Webster University in St. Louis and with the American InterContinental University. Regent's American College London offers degree programmes validated by Webster University of St. Louis in the USA.)
Regent's College was granted the right to confer degrees in July 2012, and it is hardly surprising that it should wish to acquire formal university status and to change its name to one which incorporated the word "University". It had, indeed, been planning for this over a considerable period, and had been considering the use of the name Regent's University London for at least a year. I have been shown an undated internal planning document which extols the three words in this name, noting in particular: " the Brand name, Regent's, is starting to be known in the sector and in the media." (I take this to be a reference to the single word "Regent's", because the name "Regent's College" had, I was told, been in use since 1984, and the name also has an obvious relationship to the institution's location in Regent's Park). The importance and prestige of the word University over alternatives such as College, etc., were, understandably, emphasised in the planning document. London was also seen as a highly advantageous ingredient in the name.
Part of the process of achieving university status and changing its name to one incorporating the word "University" involved circulating institutions which might wish to comment on the institution's proposed new name, and in particular to investigate the possibility of confusion. A letter was accordingly sent to the Claimant (among many others). Although it was dated 20 July 2012 it appears only to have been received by the Claimant's President's Office on 28 August 2012. The letter stated that a decision had been taken to adopt the new name, though the apparent finality of such a decision was somewhat mitigated by the fact that the letter also asked: "If you have no objection to this name I would be grateful if you would confirm this." A response was invited by 28 September 2012, though in the event the Claimant did not respond until 15 October 2012. In a letter of that date the Claimant politely objected to the name, citing what it saw as the possibility of confusion with its registered trade mark of Regent University, though further details of the mark were not given.
Before that letter was received, the Defendant had reported to the Department of Business Innovation and Skills in the week beginning 8 October that there had been a positive response from all but seven of the 167 respondents to the consultation exercise (the seven unfavourable respondents being various manifestations of London University).
On 25 October 2012 the Defendant formally applied to the Department for a change of name to Regent's University London. Whether the formal application was made before or shortly after receipt of the Claimant's letter of 15 October is not clear, but even if it was made before, the Defendant could in principle have changed its proposed name and re-applied, though whatever new name it chose might well have required further time-consuming and expensive consultation on the confusion issue.
In due course, on 19 March 2013, the Department wrote to the Defendant saying that it was satisfied that the Defendant met the relevant criteria to be entitled to call itself a university, and further that it was satisfied that the chosen name was not "misleading or confusing". I do not know whether, in reaching that latter conclusion, the Department had before it a copy of the Claimant's letter of 15 October, though there is no obvious reason why it could not have been forwarded to the Department. I think it likely, however, that it was not: the Defendant appears to have ignored the Claimant's letter, and did not even reply to it.
In the meantime, the Defendant had caused some publicity to be given to its intended change of status to that of a University. An article appeared in the New York Times of 20 January 2013, which said, among other things: "Last July, Regent's College was granted degree-awarding powers by the British Government. Next month the school, which had about 3,700 full-time students, expects to receive university status…" The article did not actually refer to the name "Regent's University London", but it was read by the Claimant as if it did, and it prompted a firmer letter dated 23 January, enclosing details of the Claimant's CTM, reserving the right to take action, and requesting a response within 10 days.
An undated holding response from the Defendant was shown to me at the hearing, but no substantive response was sent until 25 February. That response was an uncompromising one from the Defendant's trade mark agents, "udl", making it clear that it was the Defendant's firm intention to change their name to Regent's University London, denying any possibility of confusion, and putting forward various possible objections to validity. Matters proceeded in a fairly leisurely fashion for a few more weeks: a stern response from US lawyers, "mcandrews", of 22 March rebutted the points made in udl's letter of 25 February, and drew attention to the possibility of infringement of US trade marks as well. udl responded to that promptly and resolutely on 4 April. On 25 April, UK lawyers, Stevens and Bolton LLP, sent a letter before action, demanding undertakings by 9 May. On 2 May udl filed an application at OHIM for the revocation of the relevant mark. The present action was started on 16 May. The Defendant filed a Defence and Counterclaim on 10 June, denying infringement and raising essentially the same objections to validity as those relied on in the OHIM proceedings.
Thus there are at present two sets of parallel proceedings, one in OHIM and one in the English PCC, relating to the same CTM.
Article 104 of the CTM Regulation provides as follows:
Specific rules on related actions
1. The Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the...
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