INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| CRANFORD COMMUNITY COLLEGE
|- and -
|CRANFORD COLLEGE LIMITED
Jonathan Hill (instructed by Chauhan Solicitors) for the Defendant
Hearing dates: 22-23 July 2014
Crown Copyright ©
Judge Hacon :
(1) 'Cranford Community College',
(2) 'Cranford College' and
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).
The bird is apparently a pigeon.
(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  1 WLR 491.
"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."
Whether 'Cranford College' is prima facie descriptive
Assignment of goodwill
The relevant public
Evidence of 'Cranford College' acquiring a secondary meaning
(1) An email dated 5 October 2012, to Mr Fraser from Nicholas King, a developer who was to exhibit a proposal for a public park in Hounslow at CCC. The email is addressed to 'Alan Fraser (Cranford Community College)' but the attached advertisement dated 10 September 2012 refers to CCC as 'Cranford College'. Mr King appears on the email to apologise to Mr Fraser for getting CCC's name wrong. The advertisement's date is too late to prove goodwill as of February 2011. More importantly, Mr King does not appear to have sufficient familiarity with CCC or its name for the name to have acquired a secondary meaning or brand recognition.
(2) An email dated 28 April 2014 to Mr Fraser from Vivien Newbold who is Sponsorship and Sales Manager of Hounslow Business Awards, which is backed by Hounslow Chamber of Commerce. Ms Newbold was seeking Mr Fraser's backing for the inaugural awards to be given in 2014 and in the email she refers to 'Cranford College'. This email is too late to support the case for goodwill as of February 2011. There is also no reason for me to think that Ms Newbold had anything more than a cursory awareness of CCC.
(3) A flyer produced by promoters of a musical event which was to take place at CCC's premises which refers to 'Cranford College'. It was apparently distributed in 2014 and so is evidentially too late. The reference to 'Cranford College' does not prove that the name had acquired a secondary meaning in the mind of whoever drafted the flyer, particularly since the name is followed by the CCC's full address.
(4) An online new article published in May 2014 by the Rugby Football Union. It is headed 'FEATURE – Rugby breaking down barriers at Cranford'. The article refers to 'Cranford Community College' but for the most part just uses the name 'Cranford'. This article is too late and proves nothing in relation to 'Cranford College'.
(5) A flyer from Lee Evans of The Concorde Club. The flyer gives the club's address as 'Crane Lodge Road, Cranford, Middlesex TW5 9PQ' informs readers that it is located 'Just opposite Cranford College'. It offers free membership if the reader signs up by 31 March 2014, so I take it to have been distributed in early 2014, thus too late to be relevant. The writer appears to have assumed that readers would recognise 'Cranford College' to be CCC but the club's address at the top of the page may have provided clarification. Even if this were dated shortly before February 2011 I do not think it would establish that 'Cranford College' had acquired the necessary secondary meaning.
Common field of activity
Whether misrepresentation was intended by CCL
(1) The officers of CCL, that is to say Khawaja Sarwar, Chairman and shareholder of CCL and his colleagues, failed to conduct a Google search for 'Cranford College' before CCL was set up, but only 'Tier 4 Cranford College' (Tier 4 is the name given to the post-school level of training offered by CCL).
(2) Mr Sarwar claimed that he and his colleagues did not see CCC when they were searching the area. Mr Silcock submitted that he should not be believed.
(3) The logos chosen by CCL are so similar to those used by CCC, in particular the bird motifs and the blue and white colours, that the similarity can only be explained by deliberate copying.
(4) In some of its advertising and tutorial documents CCL referred to itself as 'Cranford Academy', after CCC had achieved academy status in 2011.
Alleged instances of relevant confusion
Today I had a one on one Excel training course booked for myself here at Cranford Community College. The trainer was due to turn up on site at 9.00 a.m. to be ready to start the training myself at 9.30 a.m.
I received two calls from the trainer in the morning which progressively became more aggressive towards me, due to the fact that she turned up to Cranford College, as opposed to Cranford Community College.
We provided here with the correct address, but still due to the similarity in names she got confused over where she should go.
The trainer eventually turned up on site at 10.40 a.m."
Revocation of CCL's registered trade marks