and Irish Legal Information Institute
Freely Available British and Irish Public Legal Information
England and Wales Patents County Court
You are here:
England and Wales Patents County Court >>
Regent University v Regent's University London  EWPCC 39 (06 September 2013)
 EWPCC 39
[Printable RTF version
||Neutral Citation Number:  EWPCC 39
||Case No: CC13P01973
IN THE PATENTS COUNTY COURT
7 Rolls Buildings
London EC4A 1NL
||6th September 2013
B e f o r e :
MR RECORDER ALASTAIR WILSON QC
(Sitting as a judge of the Patent County Court)
|| REGENT UNIVERSITY
||- and -
||REGENT'S UNIVERSITY LONDON
DAVID WILKINSON, Solicitor Advocate, for the Claimant
SIMON MALYNICZ, of Counsel, for the Defendant
Hearing date: 31 July 2013
HTML VERSION OF JUDGMENT
Crown Copyright ©
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 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."
- The effect of the stay provided for in Article 104(1) is said to make a very significant difference to the time within which the present dispute is likely to be resolved. If a stay is granted, it is conventional wisdom that the OHIM application and all possible appeals may take as long as a decade to resolve, while any infringement issues would still remain to be dealt with in the English Courts. If this action were to proceed in the PCC as the Claimant no doubt hoped and intended when it started the action, a trial would be likely to take place within a year, and all possible appeals might be disposed of in no more than two years after that. Having said that, however, issues are raised in the Defendant's grounds of revocation which might require a reference to the ECJ, which could greatly extend the time for a final decision.
- Whatever the relative speed of the two procedures, in view of the fact that the Defendant's OHIM application was made prior to the start of the present action, an Article 104(1) stay is mandatory unless there are "special grounds" for proceeding with the matter in England. There appears to be no direct ECJ authority on the meaning and effect of Article 104, but the English Court of Appeal has considered the point in the two conjoined cases of EMI v Sky and Starbucks v Sky  EWCA Civ 1201. Both actions were brought by aggrieved owners of registered "NOW" trade marks, who separately alleged that Sky would infringe their marks if they introduced a television service to be called "NOW TV". Sky had applied to OHIM for revocation of both marks shortly before the proceedings for infringement had been started in the UK, and accordingly brought Article 104(1) into play in both cases. In the EMI case, it was held at first instance that there were no special grounds to justify not imposing the stay. In the Starbuck case, however, the circumstances were different, and it was held that a stay should not be imposed. On the contrary, the action should be expedited. The Court of Appeal heard appeals from these decisions at the same time, and held that both should be upheld.
- It is fair to say that the facts of the two Sky cases were more or less at opposite ends of the factual spectrum: EMI had no concrete plans to use their NOW mark, whereas Starbucks had made some use of it, had firm plans to expand that use, and were justifiably concerned that their mark would be "swamped" if Sky's intended use went ahead. The facts of the present case fall somewhere between these extremes, but the statements of principle in the Court of Appeal are fundamental to deciding it.
- As I read the judgment of Etherton LJ in the Court of Appeal (with whom Patten and Tomlinson LLJ agreed, though the Westlaw report supplied to me does not say so) my first task is to identify what, if any, "special grounds" there are in the present case of the kind referred to in Article 104(1), and if there are any, to ask myself whether they are sufficiently compelling to outweigh the strong presumption in favour of granting a stay. In doing so, I must bear in mind both the underlying rationale of Article 104(1) (which is to minimise the risk of irreconcilable judgments being reached by two separate judicial bodies) and also the potential availability in an appropriate case of protective and provisional measures under Article 104(3).
- In considering what constitutes "special grounds", it is clear from the Court of Appeal's Sky judgments that they "must relate to factual circumstances specific to the given case", and in particular that they do not include matters arising out of the different procedures in other jurisdictions, including the longer times which might be taken in some jurisdictions to resolve issues. They also do not include the fact (if it be one) that an application has been made to OHIM for tactical or even allegedly improper reasons: the ECJ indicated in Turner v Grovit  ECR I-3565 at  (cited by the Court of Appeal in Sky at §112) that it was not for a court in one jurisdiction to call into question the propriety of proceedings brought in a different jurisdiction.
- On the other hand, the Court of Appeal recognised in §111 that "special facts giving rise to particular urgency" might "depending on the particular circumstances, constitute special grounds". Similarly, as it seems to me, particular kinds of confusion may count as "special grounds", if they go beyond the normal requirement of confusing similarity which lies at the root of any trade mark infringement action.
- Mr. Wilkinson relied in his Skeleton Argument on two "special grounds":
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.
- Dealing with the latter point first, it seems to me that it would ill become an English Court to suggest that OHIM might be incapable of dealing properly with the relevant issues. In any case, the legislation in question appears to be reasonably clear, and the real issue will be the effect as a matter of Community Trade Mark law (and maybe Community law generally) of national legislation which prohibits in a particular territory the use of specific designations (such as "University") unless certain national law requirements have been satisfied. This raises issues of Community law which, if the issue arose in an English Court, might well require a reference to the ECJ with significant attendant delays, though I should say that no argument was addressed to me on the point.
- As to the particular urgency of the present case, Mr. Wilkinson relied on various points (which were also the basis of his application for expedition) relating to the possible nature of confusion in the present case. Although the possibility of confusion is a normal feature of trade mark litigation, and therefore cannot in my view be regarded by itself as a "special ground", Mr. Wilkinson relied on the following specific possibilities, which are elaborated in the evidence of Mr. Isakoff, the Claimant's Vice President and Legal Counsel:
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.
- In so far as these possibilities might deprive the Claimant of revenue from fee-paying students, they seem to me typical of the potential consequences of infringement in any trade mark action, and not particularly urgent, still less "special". There are, however, two additional ingredients mentioned in the evidence of Mr. Isakoff which have to be considered in combination with these possibilities of confusion. The first is that the confusion might have an effect on third parties, particularly students who miss a time limit by applying to the wrong institution. The second is that if the Defendant were to get publicity for its members holding views antithetical to the evangelistic Christian principles followed by the Claimant, the Claimant might suffer damage to its reputation among other evangelical Christians. An example given in the evidence was a website called "finchannel.com", which reported that Regent's University London had quoted one Dr. Martin Milton as "welcoming the news that same-sex marriage will become law in England and Wales". Mr. Isakoff's evidence does not actually establish that Dr. Milton was associated in any way with Regent's University London (though I find on the internet that he is), nor that Regent's University London endorsed his views, but I do accept that there is at least a possibility that personnel at Regent's University London may from time to time be quoted for holding views unwelcome to the particular flavour of Christianity espoused by the Claimant.
- These additional factors do in my view have the potential to transform the possibilities of confusion in this case into special factors for the purpose of Article 104(1). The question is, therefore, whether they are of sufficient weight to outweigh the strong countervailing presumption in favour of a stay.
- As to the reputational point made by Mr. Isakoff, while I accept that instances of the kind he is concerned about might occasionally occur, I do not consider that their likely frequency or seriousness are such as to weigh heavily in the balance. It also seems to me that the reputation of the Claimant's University is very well established in its existing constituency, and that it would have no real difficulty brushing off any difficulties of the kind in question.
- As to the prospect of confusion, the Claimant relies on what it says are three recent instances of actual confusion to demonstrate that what it is concerned about are very real possibilities:
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.
- As usual with instances of this kind of confusion, it is possible to criticise them or cast doubt upon what they are relied on to indicate. In particular, of course, at their highest these instances can only be seen as cases of "reverse confusion", in that they emanated from persons who apparently intended to contact the Defendant but contacted the Claimant instead. I do, however, consider that they provide some support for what is in any event evident from the similarity in the parties' names: there is in the present case the potential for some confusion, particularly in instances where people click on the wrong web-site after performing a Google search. There is also no obvious reason why such confusion should only go one way.
- I accept, therefore, that there is some possibility of this kind of confusion taking place, but it does also seem to me that the nature of the business conducted by the respective parties is such that the vast majority of people involved or potentially involved with either of them will take great care over their selection of the university they approach. A student researching universities is not likely to spend long over a website promoting an evangelical Christian university in the USA if he or she is really interested in attending a conventional (albeit private) university in the UK. Conversely a student looking for an American university is not going to be attracted to a University which is very obviously based in London, even if it does have something of an American slant (arising from the points made at the end of §4 above). It follows that the use of the word "London" in the Defendant's name is an important factor in distinguishing it from a University based in the USA (though I do not think much weight can be attached to the "apostrophe S" in the Defendant's name, which is all too likely not to be noticed).
- I also cannot ignore the fact that the Claimant has only a very small presence in the EU (to judge from the very small number of Europeans studying there). Its residential courses in Europe are not calculated to increase its profile much among potential European students because they are a facility for those attending their US campus. As to MOOCS, the Claimant has only recently (in May 2013) committed itself to a significant investment in an online platform for this purpose, though I accept that this is a natural course to be taking. Furthermore the Defendant is trading on its existing reputation as Regent's College, bringing the name up to date to reflect its new status as a University.
- I am also influenced by the fact that, as I mentioned to the parties in the course of the hearing, there are throughout the English speaking world many unrelated universities with similar or identical names. One particularly striking pairing is Canterbury University (Christchurch), which is in Canterbury England, and Canterbury University, which is in Christchurch, New Zealand. There are many other instances, often due to co-incidences of place names throughout the English speaking world or to the practice of naming universities after famous people, particularly Royalty. (There are now no less than 5 Victoria Universities in the English speaking world.) Mr. Wilkinson responded that these instances derived from a past in which individual universities primarily served their own territories, whereas we are now moving to the globalised world of MOOCS. It seems to me, however, that as MOOCS becomes increasingly prevalent, so will potential students come to be increasingly adept at distinguishing established universities with similar names, just as anyone using the internet needs to be aware that it can supply webpages originating from all over the world.
- In considering the weight of the Claimant's concerns about the risk of confusion, I further take into account the availability of "Provisional and Protective Measures" under Article 104(3), and the suggestion at the end of this judgment for two measures which ought to reduce still further the risk of confusion.
- On the Article 104(1) issue, therefore, I conclude that although the Claimant has a respectable argument that there are "special grounds" in this case within the meaning of Article 104(1), they are not sufficiently weighty to outweigh the strong presumption in favour of granting a stay to avoid the risk of irreconcilable decisions of the English Court and OHIM.
- I now turn to the issue of "Provisional and Protective Measures".
- It is tempting to say that whenever a Defendant chooses to fire what is sometimes called an OHIM torpedo, interim protective measures in the nature of an injunction should be readily available, even in cases which might not merit an interim injunction in a purely English context. The ready availability of such measures ought to discourage Defendants from starting OHIM proceedings in order to get some sort of advantage from its attendant delays, and would further ensure that the whole dispute, covering infringement and validity, is dealt with at the same time in a national court. I do not, however, see any support in the Court of Appeal's judgments in the Sky cases for such an approach, nor is there any hint of it in the ECJ's decision in the Solvay case (or in the Advocate General's Opinion in that case).
- The issue therefore arises of what are the criteria applicable to a decision whether or not to apply such measures.
- In my view, the bald reference in Article 104(3) to "provisional and protective measures" must be read together with Article 103, which permits the Courts of Member States to grant "such provisional, including protective, measures …. as may be available under the law of that State in respect of a national trade mark ….". If the national Court in question is confined to granting the remedies which are available under its own national law, it seems reasonable to infer that the criteria for the grant of such remedies should also be those provided for in the national law, rather than some unified Community criteria. Were this not so, there would be the risk of serious delay in the grant of these urgent remedies while national courts sought guidance from the ECJ as to the criteria to be applied, with, no doubt, numerous further references as the criteria come to be further refined. In saying this, I do not ignore the fact that in the Solvay case the original application for interim measures was launched in Holland on 9 December 2009, and the ECJ only gave its judgment on 12 July 2012. But that case raised, and resolved, fundamental questions as to the relationship between the exclusive jurisdiction provisions of regulation 44/2001 and the ambit of the interim measures provisions. The time taken to resolve these questions in the ECJ serves to emphasise the desirability of the criteria for the grant of interim measures being matters essentially of domestic law rather than Community law. Of course this is subject to the important qualification that those domestic criteria do not involve the risk of irreconcilable decisions as to validity or infringement being taken in different jurisdictions, but they certainly do not do so if American Cyanamid principles are applied. Approaching the matter in this way is also, as it seems to me, consistent with the ECJ judgment in the Solvay case, which started from the criteria used by Dutch courts to grant interim injunctions in domestic Patent cases, and concluded that they were compatible with EU law on the simple ground that they did not involve the Dutch Court coming to a conclusion as to the validity of the Patent in question, thereby avoiding any risk of irreconcilable decisions.
- In the Sky case, the Court of Appeal expressly refrained from considering whether the ECJ's decision in the Solvay case "requires that an application for protective measures under arts. 103 and 104(3) require a more extensive procedure and analysis than is required by American Cyanamid  AC 396". The basis for this comment may have been what the Advocate General said at §49 of his opinion: "The Court has emphasised in very general terms that the court called upon to authorise such a measure must act with 'particular care … and detailed knowledge of the actual circumstances in which the measure is to take effect', which means that it must 'place a time-limit on its order' and, more generally, 'make its authorisation subject to all conditions guaranteeing the provisional or protective character of the measure ordered', normally until a decision is taken on the substance." As I see it, however, such requirements would normally be readily satisfied by conventional English interim injunction procedures based on the balance of convenience, and I certainly do not see any reason in the present case why that should not be so.
- Before looking in a conventional way at the balance of convenience, I should first deal with the point that the Defendant might be said to have only itself to blame for finding itself in its current position, since it appears to have ignored the Claimant's letter of 15 October 2012 referred to above, and failed to comply with the Claimant's more forceful objections starting with its letter of 23 January 2013:
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".
- In these circumstances it does not seem to me that this is one of those cases where an injunction should be granted on the basis that the Defendant walked into its difficulties with its eyes open, and has to take the consequences of doing so, irrespective of what would otherwise be the normal principles relating to the grant of interim relief (and in particular the balance of convenience).
- I therefore approach the present case on a conventional American Cyanamid basis. It has not been suggested that the Defendant's case is unarguable (though the Claimant does suggest that it is very weak). Nor is it suggested that the parties would not be good for the money were damages to be awarded against them at the conclusion of the trial, either by way of damages for infringement (if the Claimant wins, but no injunction is granted in the meantime) or by way of compensation under the cross-undertaking in damages (if the Defendant is, as it turns out, wrongly injuncted pending trial).
- The Claimant contends, however, that if no injunction is granted, and it succeeds at the trial, the damage caused in the meantime will be both serious and unquantifiable. That it will be unquantifiable must be right, but in my view, for the reasons given above, the unquantifiable damage is not likely to be very extensive or very serious.
- As to damage to the Defendant if it is injuncted pending trial, it is true that if an interim injunction were to be (wrongly) granted, the very considerable costs of changing to some other name (and maybe reverting in due course to its present one) could probably be calculated with reasonable accuracy. On the other hand, it seems to me that other consequences of the grant of an injunction restraining the Defendant from calling itself Regent's University London would be both unquantifiable and serious. If, in order to comply, it dropped the use of the word "Regent's", it would lose much of the advantage of its existing reputation as Regent's College, allied to its position in Regent's Park, London. Similarly, dropping "University" would lose the prestige associated with that word which the Defendant has worked so hard to obtain. Furthermore, to change to any other name incorporating the word University would presumably involve repeating the extensive consultation and approval process which has already been gone through, and the Defendant would no doubt have to revert to Regent's College in the meantime.
- In my judgment, therefore, the risk of unquantifiable (and thus uncompensatable) damage to the Defendant if an interim injunction is wrongly granted in this case greatly outweighs the risk of such damage to the Claimant if an interim injunction is wrongly refused. Accordingly this is not a case which merits the grant of an interim injunction forcing the Defendant to change its name.
- No argument was addressed to me on the possibility of the grant of any other kind of less far-reaching provision measures, but in the circumstances it seems to me that it would be appropriate to hear further argument on the possibility of such relief, including, for example, the following:
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.
- Since a draft version of this judgment was handed down, I understand that a date for a further hearing has been fixed on Wednesday 16 October 2013 at 10.30am to consider these matters, and to deal with any other issues on the form of order to be made as a result of this judgment.