7 Rolls Buildings
London EC4A 1NL
B e f o r e :
(Sitting as a judge of the Patent County Court)
| REGENT UNIVERSITY
|- and -
|REGENT'S UNIVERSITY LONDON
SIMON MALYNICZ, of Counsel, for the Defendant
Hearing date: 31 July 2013
Crown Copyright ©
Mr. Recorder Alastair Wilson QC:
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 validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office.
2. The Office, when hearing an application for revocation or for a declaration of invalidity 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 validity of the Community trade mark is already in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties to the proceedings before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it.
3. Where the Community trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay."
a. What he said was the particular urgency of the present case and the need for expedition, and
b. The fact that in its grounds for revocation the Defendant relies on certain UK legislation with which, he said, OHIM is ill-equipped to deal.
a. The possibility of potential students being confused while researching courses,
b. The possibility of students applying to the wrong institution,
c. The possibility of confusion among potential employers as to the institution a student has attended,
d. The possibility of employers seeking references from the wrong institution, and
e. The possibility of other academic institutions being confused between the two institutions.
a. The first two instances arose, oddly, on the same day, 15 July 2013. Both were cases of graduates of the Defendant hurriedly seeking by email a copy of their academic transcripts, for the purposes of arranging further study at other institutions. For some reason, both had sent (or copied) their email to the Claimant. In due course it may be necessary to take more detailed evidence from these individuals to find out if they were really confused by the parties' respective names, or were merely, for example, following up some sort of lead presented by Google without giving it the degree of attentiveness to be expected from the average consumer in this field.
b. The third example occurred very shortly before the hearing, and involved a job application emailed to the Claimant from someone in London, which incorporated a long section apparently devoted to persuading the Claimant that she had the sort of Christian credentials that they would find attractive in an employee. The significance of the application from the Claimant's point of view is that in the section headed "Why do you desire to work for Regent University?" the applicant had typed: "Because it is one of the most important Univerisity in Uk, and with my experiences I can be a good contributor." If (which is by no means clear) the applicant had been hoping to fill a job vacancy at the Defendant (which according to her application she had been told about by an "Other friend") she evidently made a careless mistake in looking the Defendant up on the internet. In due course she may no doubt be cross-examined about the circumstances in which the mistake was made, and also about whether she had actually heard about Regent's University London, as opposed to Regent's College.
a. As to the 15 October 2012 letter, it did not refer to the existence of a CTM, and could equally well have been taken to be referring to a US trade mark. There has, moreover, been no explanation for the fact that it took at least six weeks to send it, about two weeks after the Defendant's consultation period had ended on 28 September 2012. (I do not know who was responsible for the earlier period of more than a month between 20 July 2012, the date of the Defendant's first letter, and 28 August 2012, when it was received in the Claimant's President's Office, but when it did arrive there it should have been evident that the letter was dated more than a month earlier, and that it merited a speedy response.)
b. As to the later complaints, starting on 23 January 2013, the Defendant was by then fully committed to using the name Regent's University London. Its consultation exercise had been submitted to the Department of Business Innovation and Skills along with its application to be accorded University status, and the Department was in the process of approving the application.
c. It is also fair to say that the Claimant proceeded in a fairly leisurely manner between 23 January 2013 and actually starting these proceedings in May 2013, even though it was obvious to them in January 2013 (from the New York Times article referred to above) that the Defendant had taken an irrevocable decision to adopt its present name. By May 2013, when proceedings were started, the change of name had actually taken place.
d. In any event, the Defendant considered that it had a good answer to the Claimants' objections, which were set out in udl's response, and no-one has suggested that they were anything other than bona fide. Furthermore the Defendant had powerful and entirely bona fide reasons for its particular choice of name: no other name (except perhaps "Regent's University") so aptly reflected the change of status of Regent's College to that of a university, without abandoning the goodwill associated with the word "Regent's".
a. First, it seems to me important that the Defendant should not use the name "Regent's University" except when immediately followed by the word "London", and that the word "London" should appear with no lesser prominence than is already the case in most of their promotional material. (I would point out in this connection that there are a few instances in the extracts from the Defendant's website in exhibit LI2, where the name Regent's University appears without the word London, which this provision would be intended to prevent.)
b. Secondly, whilst such a measure is never wholly effective, it seems to me that the risk of confusion would be reduced still further if, pending the final outcome of these proceedings, the Defendants were to place a strap line on every page of their website (and any other promotional material they issue) containing words to the effect that Regent's University London has no connection with Regent University of Virginia USA.