Cranford Community College v Cranford College Ltd [2014] EWHC 2999 (IPEC)

Case No CC13P04105[2014] EWHC 2999 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 19/09/2014
Before
HIS HONOUR JUDGE HACON
Between
CRANFORD COMMUNITY COLLEGEClaimantCRANFORD COLLEGE LIMITEDDefendant
Ian Silcock (instructed by Winckworth Sherwood LLP) for ClaimantJonathan Hill (instructed by Chauhan Solicitors) for DefendantHearing Hearing dates: 22-23 July 2014
JudgmentJudge Hacon :Introduction
[1]The Claimant (“CCC”) is a private limited company which operates a state secondary school in the London Borough of Hounslow (“LBH”). The school has been in existence since 1975, formerly under the name ‘Cranford Community School’ and since 1997 ‘Cranford Community College’.[2]Cranford is the name of the part of west London in which the school is located. For the locals Cranford consists of an area that broadly corresponds with the LBH council ward of that name.[3]The Defendant (“CCL”) is a privately owned educational establishment which offers courses for students of post-school age. It was incorporated on 25 June 2010 and its first student was enrolled in October 2011. To date the students have come from outside the United Kingdom although there is no reason why students from this country could not attend. CCL trades as ‘Cranford College’ and has also referred to itself in advertising as ‘Cranford Academy’. It is located about 500 metres from CCC as the crow flies, about 800 metres to walk, and is also in Cranford.[4]CCC has brought proceedings for passing off against CCL. CCC relies on goodwill in its educational services since 1997 associated with the following three names (“the CCC Names”):(1) ‘Cranford Community College’,(2) ‘Cranford College’ and(3) ‘Cranford’. In addition CCC relies on goodwill associated with the following logos used by CCC since the dates indicated (“the CCC Logos”): 2012 2012 2010 2005 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).[5]CCC complains about the CCL’s use of the names ‘Cranford College’ and ‘Cranford Academy’, its company name ‘Cranford College Limited’ and CCL’s domain names ‘cranfordcollege.com’, ‘cranfordcollege.co.uk’ and ‘cranfordacademy.com’ (collectively “the CCL Names”). CCC also complains about CCL’s use of the following logo (“the CCL Logo”): 6. The bird is apparently a pigeon.[6]CCL is the registered proprietor of two United Kingdom trade marks (“the CCL Trade Marks”), namely(i) UK Trade Mark no. 2591850 which is in the form of the CCL Logo shown above and(ii) UK Trade Mark no. 2657449 which takes the form of another logo:[7]CCC seeks a declaration that the CCL Trade Marks were invalidly registered on the alternative grounds that the registrations were in breach of s.5(4)(a) of the Trade Marks Act 1988 or s.3(6) of that Act.[8]CCC also alleges that CCL’s company name, its domain names and its trade marks are instruments of deception. CCC seeks an order that the company name should be changed and that the domain names and trade marks should be assigned to CCC.

Passing Off

[9]Attention at the trial was primarily focussed on the allegation of passing off and mostly on the name ‘Cranford College’ for reasons that made sense and which I will discuss below.

The law

[10]CCC advanced its case based on the conventional approach to a passing off action, that is to say that it was obliged to establish(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 [1990] 1 WLR 491.[11]It was not disputed by CCL that although the law of passing off is primarily concerned with goodwill in the business of a trader, it may be relied on to protect goodwill enjoyed by non-traders such as a charity (British Diabetic Association v The Diabetic Society [1996] FSR 1), a church (Old Apostolic Church of Africa v Non-white Old Apostolic Church of Africa 1975 (2) S.A. 684, a South African case approved by Robert Walker J in the British Diabetic case) or a political party (Burge v Haycock [2001] EWCA Civ 900; [2002] RPC 28). I agree and see no reason why the same protection should not extend to a school in the state sector. (A school in the private sector trades in the conventional sense).[12]It was also common ground that whether or not CCL was passing off had to be assessed as of the first date of its conduct complained of (see Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429). Mr Hill, who appeared for CCL, submitted that this was February 2011 when CCL’s website went live. Mr Silcock, who appeared for CCC, accepted this.

Descriptive names

[13]One of the principal grounds of defence relied on by CCL was that the CCC Names were descriptive and therefore either they provided no basis for an action of passing off at all, or if they did, even minor differences in the trading style used by CCL were enough to afford a defence. It was said that ‘Cranford College’ describes literally what it is: a college in Cranford. It was submitted that ‘Cranford’ by itself is even more descriptive and CCC was attempting to monopolise the name of the locality for all educational services. Finally, the word ‘Community’ was a generic sort of word which added nothing by way of distinctiveness. Mr Hill referred me to Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 and Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244; [2007] RPC 5.[14]It has long been established that a trade name which is descriptive in its literal meaning may be protected by the law of passing off if it has acquired a secondary meaning so that in the relevant market it has come to distinguish the claimant’s goods or services from those of other traders, see Reddaway v Banham [1896] AC 199.[15]Separately from this, it is possible for a trader to protect goodwill associated with a name which is in part, even in large part, descriptive, provided the whole trading name is capable of distinguishing his goods or services. However in such a case a defendant may avoid passing off by using a trade name which differs only in minor detail from that of the claimant. The classic case in point is Office Cleaning in which the Respondents’ ‘Office Cleaning Association’ trade name differed sufficiently from ‘Office Cleaning Services’ used by the Appellants for there to be a finding of no passing off. Lord Simonds, with whom Lord Wright, Lord Porter and the Lord Chief Justice, Lord Goddard, all agreed, said this (at pp.42-43):
“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.”
[16]One way of interpreting this ruling is that it is really a statement of policy: if the claimant chooses to use trade name of a significantly descriptive nature, a greater degree of confusion will be allowed. In effect, a bit of passing off will be tolerated – or rather, a certain level of confusion which would have resulted in passing off had the claimant used a ‘fancy’ trade name will not be actionable when the trade name is largely descriptive. This is desirable and necessary to avert the unfair monopolisation of descriptive words.[17]This would imply a ‘carve-out’ or special defence to the usual rules of passing off. A difficulty with this interpretation is that it also implies an awkward difference in threshold when it comes to assessing whether a substantial proportion of the relevant public have been led by the defendant’s trade name to make a false assumption about trade origin. And the threshold will presumably alter according to the degree of descriptiveness of the claimant’s trade name.[18]An alternative interpretation is that Lord Simonds had it firmly in mind that the court must always be astute to ensure that the confusion relied on by the claimant is confusion of a sort which gives rise to actionable passing off. Where the public mistake one trader for another only because of the descriptive words common to both their trade names, there is no passing off because those descriptive words are not capable of distinguishing the goods or services of one trader from another. They cannot serve as a badge of origin. Therefore the claimant could not establish the first element of passing off: no goodwill in his business can have been generated which is associated with words that are merely descriptive.[19]Thus, confusion caused solely by the common use of descriptive words (or possibly the use of a common descriptive idea, albeit in different words) in a trade name is not evidence of a misrepresentation – it’s just confusion generated by two traders describing their respective businesses in the same way. An addition to descriptive words, even a minor one, can in principle give rise to a badge of origin – a trade name which the claimant can protect. But he cannot use such a trade name to fence off to his own use the descriptive words contained within the name; he cannot rely on those descriptive words, where those words are the source of confusion, to sustain an action for passing off.[20]Whichever was the principle that Lord Simonds had in mind in Office Cleaning, it was distinct from that in Reddaway v Banham. Lord Simonds emphasised that there was no suggestion that ‘Office Cleaning’ had acquired any secondary meaning and that this was not the point in issue. However it seems to me that if a prima facie descriptive name has acquired a secondary and distinctive meaning, this does not necessarily put the name into the same position as an inherently distinctive trade name. The scope of protection afforded in respect of a descriptive name with a secondary meaning is liable to be narrower. The public will not have erased from their collective mind the usual meaning given to the words as a matter of ordinary language. It is therefore possible that either a minor alteration in, or an addition to, the name, or a presentation of the name in a different manner or context could restore the descriptive meaning in the mind of the public and that in consequence no misrepresentation will occur.[21]The degree to which this will happen, and therefore the degree to which the scope of protection of a descriptive name with a secondary meaning is narrower than that afforded to an inherently distinctive name, will depend on the extent to which the secondary meaning has taken root in the mind of the public so as not to be easily displaced. To use a suggested example, the secondary meaning of ‘Eton College’ has now had several hundred years to override the literal idea of any college located in Eton.[22]In addition, what looks superficially like relevant confusion may not be. It may be that in the minds of some members of the public the name has not acquired the secondary meaning. These individuals are liable to mistake the claimant for the defendant because both use trading names which describe their respective businesses in the same way (as in the Office Cleaning context). This is not evidence of a misrepresentation.

CCC’s Names

[23]CCC’s argument was in large part concerned with its complaint about the use of ‘Cranford College’ by CCL and the CCC’s goodwill associated with that name. I think this made sense. If CCC failed to establish that it had goodwill associated with ‘Cranford College’, proving goodwill in relation to ‘Cranford Community College’ was not going to advance its cause since CCL does not use ‘Community’ in its title. Likewise, it was not going to do any better with goodwill associated with ‘Cranford’ alone, assuming that could be established. Ex hypothesi CCL would not have passed off its services by the use of ‘Cranford College’ and there would be no greater likelihood of relevant confusion by reason of CCL’s use of a name consisting of ‘Cranford’ plus some word other than ‘College’.[24]So I too will focus on CCC’s case that ‘Cranford College’ was a name distinctive of its educational services in that part of London, that consequently it owned goodwill associated with ‘Cranford College’ and that use of the same name by CCL gave rise to a misrepresentation and damage.

Whether ‘Cranford College’ is prima facie descriptive

[25]As I have said, CCL submitted that ‘Cranford College’ is prima facie descriptive as a trade name in the context in which it was used by both parties. I accept that. The literal meaning that would be given to those words is that they refer to a college located in Cranford.[26]CCC argued that ‘Cranford College’ is not descriptive, relying on Montgomery v Thompson [1891] AC 217. In that case the appellant brewed ale in the town of Stone in Staffordshire but was restrained from calling its product ‘Stone Ale’ because that was the name by which the ale of the respondent, another brewer in Stone, had become known. This was expressly stated by the House of Lords to be a case which turned on whether the name ‘Stone Ale’ had acquired a secondary meaning, predating Reddaway v Banham. I don’t think it advances CCC’s argument.[27]It follows that in my view CCC must show that ‘Cranford College’ had by February 2011 acquired a secondary meaning among the relevant public, namely that it referred to CCC and, importantly, that it would not be taken to refer to any other educational establishment. Plainly it is possible for such a secondary meaning to arise in relation to the name of a college where the name describes where it is – ‘Eton College’ is an example I have already mentioned. Whether CCC’s trade name had assumed distinctiveness, not necessarily of that order, but sufficiently in the mind of the relevant public to create goodwill that CCC could rely on, was a matter for evidence. Goodwill Assignment of

Goodwill

[28]CCC relies on goodwill generated since 1997. CCC was incorporated as a company on 10 March 2011. The company is a corporate vehicle through which the school has operated since its acquisition of academy status under the Academies Act 2010. Before such incorporation the school was owned and operated by LBH and for a short period from 2010 until March 2011 by a body known as the ‘Governors of Cranford Community College’. There was evidence that goodwill created while the school was controlled by LBH and later by the Governors was assigned to CCC following its incorporation in March 2011.[29]This was not in dispute, subject to one reservation which CCL had. Up to July 2012 Hounslow operated an adult education centre making use of the facilities at CCC’s school after hours under the name ‘Cranford Adult Education Centre’. It shared staff with CCC but it provided distinct services. At all times it was controlled and administered by LBH, even after CCC was incorporated in March 2011. When these adult education services left CCC’s premises, what had been the Cranford Adult Educational Centre moved to a nearby part of Cranford and continued as the ‘Meadowbank Adult Education Centre’. Mr Hill argued that the goodwill in what was the Cranford Adult Educational Centre must have remained with LBH. I have seen a written assignment dated 31 March 2011 recording the assignment of assets from LBH and the Governing Body of Cranford Community College to CCC. The assets are stated to include “All rights to use the name of the School and all logos and domain names used exclusively by the school”. The events as explained by Alan Fraser, Assistant Head Teacher at the secondary school run by CCC and its predecessors, and Marian Brooks, Head Teacher of the school from 1996 to 2001, suggest that LBH was the body which controlled Cranford Adult Educational Centre and thus the quality of its services. LBH consequently owned the goodwill in those services and I have no reason to suppose that this goodwill has ever left the ownership of LBH. I doubt it makes much difference.

The relevant public

[30]The relevant public will live in CCC’s catchment area. They will consist especially of parents and guardians responsible for children and young adults of school age, and also students of an age to decide or influence which educational establishment they will attend. The catchment area is primarily in Hounslow, but extends also to Ealing and Hillingdon, at least for sixth form students.[31]Parents, guardians and students are of most significance because it is in relation to those individuals that the potential harm identified by CCC would occur. According to CCC this would be(i) diversion of custom,(ii) a false belief that there is a business association between CCC and CCL and(iii) erosion in the distinctiveness of CCC’s trade name. I don’t think (ii) is of itself a head of damage, but I will assume that CCC’s case is that such a false belief will leave it vulnerable to damage to its reputation in the event that there should be any blameworthy behaviour by CCL (and CCC says there was, which I discuss below). In principle anyone who reads a local paper could form a blemished view of CCC due to the activities of CCL, if CCC is right, but this would only matter to the extent that it had any effect on the likelihood of students applying to CCC. It is possible that someone who has no direct interest in the services of CCC could affect the view of someone who has, so although less important, those who are neither parents, nor guardians or students are not excluded from the relevant public. Head of harm (iii), like (ii), would cause damage only to the extent that it affected student enrolment.[32]CCC argued that it enjoyed a reputation outside the three boroughs, extending both nationally and abroad, so that the relevant public in whose mind goodwill subsisted was correspondingly widespread. CCC relied on applications for its sixth form college from students living abroad, the fact that CCC has five times held the International School Award from the British Council and that it has contacts with numerous educationalists and educational establishments abroad, some of whom visit the school. I do not think that these matters give rise to goodwill in the mind of those living outside west London, or at least nothing significant. In cross-examination Mr Fraser said that lower school students come from the local catchment area, that only 20% of the students who attend the sixth form have not moved up from the lower school and that of the 20% practically all come from Hounslow, Ealing or Hillingdon. The British Council’s International School award appears to be more about promoting the awareness of overseas countries among students in UK schools rather than the other way around. I don’t doubt that the very fine reputation that the school has established for itself extends to some educationalists abroad, but to the extent that this arguably corresponds to overseas goodwill, I do not believe that there is a risk of confusion among those individuals. Mr Fraser also mentioned a national spelling bee in which CCC takes part. Even if this has generated some goodwill outside Hounslow, Ealing and Hillingdon, I don’t think such limited goodwill has relevance to this case.[33]So the relevant public consists of individuals living in Hounslow, Ealing and Hillingdon, in particular (though not exclusively) parents, guardians and students. But it is necessary to be more precise than that. First, CCC’s goodwill does not extend to those among whom ‘Cranford College’ has acquired no brand recognition – see HFC Bank plc v Midland Bank plc [2000] FSR 176. In the present context I think this translates into a need to identify those among whom ‘Cranford College’ has acquired a secondary meaning such that, absent a clear indication to the contrary, the relevant individuals will assume that the name refers exclusively to CCC. In line with what Lloyd J said in HFC Bank (see in particular pp. 182-183) this requires more than a cursory or transitory awareness of CCC as a school and its ‘Cranford College’ name, probably a good deal more. Secondly, and moving to the other end of the awareness spectrum, it seems to me entirely unlikely that the parents and guardians responsible for students who currently attend CCC, and the students themselves, would confuse CCC with CCL by, for instance, going to the wrong place. They might I suppose be wrongly led to believe that CCL was connected with CCC but it is not easy to see how such a belief could have the potential to cause damage without first being dispelled.[34]In summary, I think the group of individuals who form the relevant public in these proceedings is smaller than might at first appear.

Evidence of ‘Cranford College’ acquiring a secondary meaning

[35]CCC’s evidence about the name commonly given to the school was a little contradictory. Ms Brooks said that throughout her time the school was known by everyone as (just) ‘Cranford’. Mr Fraser said that the school’s name was commonly abbreviated to ‘Cranford’ or ‘Cranford College’. He said there were two other schools in the Cranford area, both primary schools. One was Cranford Park Academy which, Mr Fraser said, is commonly known as ‘Cranford Park’ and the other was Cranford Primary School, referred to as ‘Cranford Primary’. Mr Fraser said that neither was identified as ‘Cranford’ or ‘Cranford College’. He identified a number of documents in which CCC, by contrast, was referred to by one or other of those two names.[36]Joan Conlon is the Inclusion and Participation Manager for LBH and she gave evidence on behalf of CCC. She said that since she started working for LBH in 2002 she has known CCC by its full title of ‘Cranford Community College’ or as ‘Cranford College’ (but apparently not ‘Cranford’).[37]Valerie Brown has been employed as a receptionist at CCC since March 2010 and her evidence was that from the beginning of her employment she, colleagues, students and callers commonly referred to the school as ‘Cranford College’, though never ‘Cranford’.[38]I think some care has to be taken with this evidence. Internal use of a shortened name by those who work or study at CCC is not probative of goodwill among the relevant public. Not all those who adopt a shortened name for CCC outside the school itself are directly relevant either, Mrs Conlon for example.[39]Mr Silcock identified the following as the best evidence that among the relevant public CCC had acquired the goodwill relied on (and which, for the reasons discussed, must mean among whom ‘Cranford College’ had acquired a secondary meaning by February 2011):(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.[40]I have no doubt at all that over the years CCC has generated for itself a reputation as a particularly fine school and that consequently there is an over-subscription each year from students who would like to study there. But for the purpose of these proceedings CCC had to show that it owned goodwill associated with the name ‘Cranford College’, and in particular that by February 2011 the relevant public treated that name as referring only to CCC and not to any other body. This has not been proved on the evidence and therefore the first element of passing off, goodwill, has not been established.

The logos

[41]It is possible that despite no secondary meaning for ‘Cranford College’, CCC had goodwill associated with one or more of the CCC Logos. These are distinctive and so there is no need to establish a secondary meaning.[42]The difficulty any claimant has where it uses a logo as well as a trade name is proving that the public identifies its goods or services by reference to the logo rather than the trade name, such that the claimant has significant goodwill associated solely with the logo. There was no evidence of that in this case. Relevant confusion Common field of activity[43]There was quite a lot of evidence and argument about the extent to which the activities of CCL overlapped those of CCC and the relevance of this. Mr Silcock submitted that there is no rule of law requiring a claimant in passing off case to prove a common field of activity. That’s right, but the closeness or otherwise of the activities of the claimant and defendant are nonetheless relevant, sometimes highly so. This is not a matter of law. It is just that in the way of things the closer the two fields of activity, the greater is the likelihood of relevant confusion. This can matter, for instance where circumstances are such that direct evidence of such confusion will probably never emerge.[44]In the present case there is not much direct overlap between CCC’s services and those of CCL. The former offers education provided by the state, overwhelmingly to local secondary school students. CCL offers courses for those who have left school, which must be privately funded. So far CCL has recruited only from abroad. I think, though, that the activities are close enough such that the public could conceivably contemplate a connection between the two institutions – this is not a case in which such a connection must be dismissed as highly improbable because of the contrast in what the parties do. In order to decide whether the public is likely to believe there is such a connection in the present case, I must consider the alleged instances of relevant confusion.

Whether misrepresentation was intended by CCL

[45]First of all Mr Silcock argued that CCL intended to misrepresent itself to be associated with CCC and that therefore I should infer that this had happened.[46]It has long been established that where the court reaches the view that the defendant in a passing off action deliberately seeks to take the benefit of the claimant’s goodwill, the court will not “be astute to say that he cannot succeed in doing that which he is straining every nerve to do”: see Slazenger & Sons v Feltham & Co (1889) 6 RPC 130 at p.538. The reason for this was given by Lord Simonds in Office Cleaning at p.42:
“But if the intention to deceive is found, it will be readily inferred that deception will result. Who knows better than the trader the mysteries of his trade?”
. See also Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19, at [115].[47]CCC argued that I should infer an intent on CCL’s part to seek the benefit of CCC’s goodwill when CCL was being set up in 2010 and 2011. The following were relied on:(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.[48]Mr Sarwar denied any intent on the part of CCL deliberately to pass itself off as CCC. In my view the matters relied on by CCC are not sufficient for me to disbelieve Mr Sarwar. Alleged instances of

Relevant confusion

[49]There were quite a lot of alleged instances of relevant confusion. I asked Mr Silcock to identify the most cogent. He proposed nine.[50]The first was an email dated 1 July 2014 from Jenny Moir, apparently a student on a course at CCC, to Mr Fraser. It begins as follows:
“Hi Alan, 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.”
The trainer eventually turned up on site at 10.40 a.m.”[51]The second was a letter from the TV licensing authority intended for CCL but which was sent to CCC.[52]The third was an email dated 21 June 2012 with an attachment wrongly sent to CCC by Nick Hagenow of the Confederation of Tourism and Hospitality in London, W1. It concerned diplomas not offered by CCC but which Mr Fraser believes to be offered by CCL.[53]The fourth concerned an incident in November 2012 described by Ms Conlon. Dignitaries from the American embassy who had been invited to CCC arrived at CCL instead. Ms Conlon said that a similar thing happened to representatives from the Home Office. In cross-examination Ms Conlon explained that in the case of the Americans at least, the taxi driver had made a mistake.[54]In the fifth, three cleaners mistakenly attended CCC for an interview when the job was being offered by CCL[55]The sixth concerned a supply teacher recruited by CCC who was late on his first day because he had gone to CCL.[56]The seventh was an invoice dated 1 June 2012 from a company called ATHE Limited which had apparently supplied 10 units of teaching materials for a diploma in healthcare management. The invoice was wrongly addressed to CCC.[57]The eighth was an email dated 24 July 2012 from Sue Wynne, a receptionist at CCC, to her colleagues Joseph Barrett, Valerie Brown and Mr Fraser at CCC. Ms Wynne had apparently received a phone call from someone called Sarmad at CCL asking whether a delivery from Xerox had wrongly arrived at CCC. However in the email Ms Wynne uses ‘Cranford Community College’ to refer to CCC and ‘Cranford College’ to refer to CCL.[58]The ninth is an email dated 9 July 2013 which indicates that an organisation called London Crest Open Centre wrongly had CCC’s email address on its mailing list for the supply of examination material, which was material that CCC did not use.[59]The striking feature of every one of these nine instances is that none of them concern individuals who form part of what in my view constitutes the relevant public for the purpose of identifying any misrepresentation in this case. This is consistent with what Mr Fraser said in cross-examination: practically all parents, guardians and students considering an application to CCC would consult Ofsted reports and league table results. Mr Fraser accepted that this would result in no confusion between CCC and CCL.[60]All the people in CCC’s nine best instances of confusion were individuals such as taxi drivers, candidate cleaners or supply teachers on their first day, delivery men and the like, in whose minds ‘Cranford College’ will have enjoyed little if any brand recognition and cannot have acquired the requisite secondary meaning.[61]I should refer also to the evidence of Andrew Vost which is consistent with these nine instances. Mr Vost has been a caretaker at CCC since December 2012. He said that since the start of his employment at CCC he has experienced the delivery to CCC of a number of packages intended for CCL despite the packages correctly bearing CCL’s Bath Road address rather than CCC’s High Street address.[62]In some passing off cases evidence of confusion among individuals such as those who deliver parcels or the post may be relevant as secondary evidence. A postman may not form part of the public in relation to whom a misrepresentation will lead to damage, but it can sometimes be said that if the postman is confused, others probably will be too. That does not apply to the present case. The nine best instances relied on by CCC do not suggest that there has been a misrepresentation on the part of CCL. The type of confusion which occurred is instead of the sort that is to be expected when two organisations use the same descriptive name.[63]I am not sure that Office Cleaning strictly applies to this case, focussing as I have on the common use of ‘Cranford College’ and thus the question whether that name had acquired a secondary meaning. However, both parties made reference to Office Cleaning and Mr Hill submitted that it was of direct application. He argued that Lord Simonds’ speech should be read according to the first interpretation to which I referred above and that because of CCC’s use of a descriptive name, the policy is that a degree of passing off must be tolerated without its being actionable. Mr Hill suggested 20%. I say nothing about that. However I am satisfied that the sort of confusion which CCC has undoubtedly shown to have existed was not relevant confusion; it was not of a nature such as to suggest that there has been a misrepresentation by CCL.

The logos

[64]Assuming in CCC’s favour that it has some sort of goodwill associated with the CCC Logos, the question is(a) whether the public would identify CCC by reference to such a logo irrespective of the name used alongside the logo and(b) if so, whether the CCL Logo is sufficiently similar to give rise to a misrepresentation. The evidence relied on by CCC did not concern the logos and no misrepresentation has been established.

Damage

[65]I will be brief about damage. Mr Fraser explained that if CCC were to acquire a bad reputation among parents and guardians of potential students and among the potential students themselves, this could result in a negative spiral of fewer applications to enrol, lower school numbers and therefore reduced funding. Mr Fraser said that this sort of thing can happen and that a school like CCC could find it difficult to escape from such a pattern. I fully accept that evidence.[66]I mentioned earlier that CCC pointed to a real example. It appears that CCL suffered a loss of Tier 4 status, i.e. its right to offer courses at Tier 4 level. CCL has appealed and I am not in a position to say whether the loss of status was due to any fault on CCL’s part. There was no evidence that this so far has rubbed off on CCC in any adverse way. Nor was there any evidence of other damage.[67]But the main point is that even if damage of the type which Mr Fraser fears were to happen, it could only be taken into account if it were caused by a misrepresentation on the part of CCL. I have found that there has been no misrepresentation.

Revocation of CCL’s registered trade marks

[68]CCC argues that CCL’s trade marks should be revoked pursuant firstly to s.47(2)(b) and s.5(4)(a) of the Trade Marks Act 1994 and secondly s.47(1) and s.3(6) of the Act. There was little argument about this aspect of the case at trial because it was accepted that CCC’s case stood or fell with its main argument on passing off.[69]Regarding s.5(4)(a), CCC relied on the same evidence and arguments advanced in support of its contention that use of ‘Cranford College’ constituted a misrepresentation. In fact further evidence would have been needed to show that use of each of CCL’s (logo) Trade Marks, as opposed to just the name ‘Cranford College’, was liable to be prevented by virtue of the law of passing off. This falls to be assessed as of their respective dates of application, 18 August 2011 and 22 March 2013. As it is, by reason of my findings above this application fails.[70]The same applies in relation to s.3(6). For reasons given above, in particular in relation to CCC’s allegation that CCL intended to pass off its services for those of CCC, I do not accept that CCL applied for either of the CCL Trade Marks in bad faith.[71]Similarly I find that CCL’s company name, its domain names and the CCL Trade Marks are not instruments of deception

Conclusion

[72]I do not believe that there has been or that there is any likelihood of a misrepresentation by CCL, or that CCC owns goodwill of a nature such that a misrepresentation could arise. I find that there are no grounds for revoking the CCL Trade Marks or requiring CCL to assign any of its rights. I therefore dismiss the action.

Cited in 5 later judgments