IN THE PATENTS COUNTY COURT CASE NO.CC13 P00306 BETWEEN THE CHANCELLOR AND SCHOLARS OF THE UNIVERSITY OF OXFORD Claimant and OXFORD LAW SCHOOL LIMITED Defendant DEFENDANT’S SUBMISSIONS 1. The Defendant denies the claims made by the Claimant in their entirety and asks the court to dismiss the claim and to award the Defendant a nominal amount of damages for lost revenue and costs of new website. 2. The Claimant has three trade marks registered, which are relevant for present purposes, OXFORD UNIVERSITY and UNIVERSITY OF OXFORD within the UK and OXFORD being a Community Trade Mark (CTM). In all cases the registration is for the provision of university services or services of a type supplied by a university. The Defendant does not provide nor has it claimed that it provides any “university services”. In particular the CTM relates to the provision of services in relation to the English language, in other words, services regarding the teaching of the English language. The Defendant does not provide any such services and consequently there is no breach of the Claimant’s trade mark. 3. The Defendant further denies that the trade marks of the Claimant and the mark used by the Defendant are similar or identical or that the categories for which the Claimant’s trade marks are registered are similar to or identical with the services supplied by the Defendant. The Claimant’s trade marks are registered for “degree conferring and university services”. The Defendant does not provide such services 4. The Defendant would like the court to take into consideration various aspects of the recent case of British Sky Broadcasting Group plc. v Microsoft Corporation [2013] EWHC 1826 (BSkyB v Microsoft). In this case the judge considered (having reviewed previous authorities) a number of factors which are relevant considerations before a finding of trade mark breach can be made. Fir¬¬¬stly the concept of the “average consumer” of the relevant goods and services. The average consumer 5. For a claim to succeed the Claimant needs to show (the burden of proof being on the Claimant) that an “average consumer of the Claimants goods and services would be confused”. The average consumer is not a general member of the public but a member of the public who is likely to or interested in attending the Claimant courses or making use of the services provided by the Claimant. That would make the “average consumer” in this case anything but “average”. In fact the “average” consumer in this instance would be from a very small select member of the public, and very different from the “average” student who might seek what might be termed services provided by a “normal” university, to whom the trade mark of the Claimant would be distinctive. 6. It is then necessary to consider the impact of the allegedly infringing sign or mark on the proportion of the relevant class of persons to whom the trade mark is distinctive. (Interflora v M & S [2013] EWHC 1291) It should be sufficient for a finding of infringement that a significant proportion of the relevant class of persons are likely to be confused and that such confusion will have an adverse effect on the function of the registered trade mark. However confusion on part of the ill informed or un-observant must be discounted 7. Given the above proposition of law it is the Defendant’s case that the Claimant has not produced any evidence, or any relevant and material evidence, of the likelihood of confusion in the relevant class of consumers, let alone “evidence” that any such confusion will have an adverse effect on the function of the registered trade mark. The person(s) allegedly confused were not the “relevant class of persons” for whom the trade mark is significant nor indeed would they appear to be “significant” in numbers. It would clearly appear to be evidence of the “ill informed and un-observant” which the court is invited to discount. Moreover the claimant has shown no evidence that any such confusion has had an “adverse effect on the function of the trade mark”. 8. Furthermore the court will note that the Defendant voluntarily, and without prejudice, re-branded its website on 11th January 2013, a matter not disputed by the Claimant, to avoid any notion of similarity or confusion. Nevertheless the claimant proceeded to issue proceedings on 25th January 2013. Infringement by similarity of goods and services or similar or identical sign 9. Secondly, to succeed, the Claimant has to establish that the goods or services of the Claimant are similar to or identical with the goods and services provided by the Defendant. The Defendant does not accept that there is any similarity of goods and services between those services provided by the Defendant and those provided by the Claimant or indeed those for which the Claimant’s trade marks are registered. This is a matter which was accepted by the representatives of the Claimant in correspondence in October/November 2012. 10. The Defendant provides basic “starter” courses requiring little or no qualifications which are designed to enable those attending to register with various enabling bodies as caseworkers. For example the Office for Immigration Services Commissioner (OISC) does not require any qualification or prior experience to register. Nevertheless the Defendant provides valuable tuition to enable prospective caseworkers to learn basic aspects of law and procedure. The Chartered Institute of Legal Executives (CILEx) courses provided by the Defendant are a condensed version of the level three “Certificate in Law and Practice” or stand-alone units such a Family Law and practice or Civil litigation designed to enable some qualification to be gained by those aspiring for a legal career as Para-legal support staff. All of these courses are provided over a short term ranging from one day to two weeks or online 11. The Claimant does not provide any of these courses or anything remotely similar. The Claimant’s reputation is for undergraduate and post graduate courses in law and other fields. Furthermore any courses that the Claimant provides over one or two days or at weekends are not law courses but courses of general interest or “Lifelong” courses such “Age of Revolution” and “Am I free?” The only law course which the Claimant provides online is MSt in International Human Rights Law with strict selection criteria including at least an upper second class first degree. The defendant notes the claimant’s claim with specific reference to family law courses but there is no evidence or indication on the Claimant’s website that it provides any specific family course. 12. Accordingly the Defendant does not accept that there is any similarity in the goods or services provided by the Defendant and goods or services provided by the Claimant or those for which the Claimant’s trade marks are registered. As was stated in the aforementioned case of BSkyB v Microsoft there needs to be a “close and complimentary connection” between the core goods or services for which the Claimant’s trade mark is registered and the Defendants goods or services. Close connection is a matter to be taken into account in the global assessment of the alleged trade mark breach. The Defendant states that there is no such close and complimentary connection, a fact acknowledged by the legal representatives of the Claimant in correspondence in October 2012 and, no “aural, visual or conceptual similarity” between the goods and services of the Claimant and the Defendant. 13. Furthermore the sign of the Defendant is substantially and significantly different from the sign of the Claimant. Bearing in mind what is said above regarding the average consumer who will easily distinguish the Claimant’s sign from that of the Defendant. A search of Google for “oxford law school” gives an entry for the Claimant at the top of the list of entries but the Defendant appears mid-table with “meta-tag” lines of “train as immigration caseworker, Para-legal immigration training” and such like. The Defendants mark and shield are significantly different, the shield being designed as “Coat of arms” whereas the Claimant’s shield is circular. As a result the Claimant submits that there is no similarity in the signs used by the Defendant and no visual, aural or conceptual similarity. In addition the court will take into consideration the voluntary re-branding of the Defendant’s website and disclaimer prior to the issue of proceedings. Dilution, detriment and without due cause 14. Thirdly, the Claimant has to establish “dilution and detriment without due cause” of its trade mark. The burden of proof is on the Claimant to show dilution and detriment. For dilution to occur, the Defendant relies on the recent case of Intel Corp. v CPM UK (2008) ECR 1-8823 where the court stated that there must be evidence of dilution having taken place or a “serious risk of dilution taking place in the future”. The Claimant has shown no evidence of any dilution having taken place or likely to in the future. Furthermore the court went on to deal with detriment and stated that “it follows that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such change will occur in the future” ECJ paragraph 77 of Intel Corp v CPM UK. 15. The Defendant states that there has not been any dilution nor is any prospect of dilution in the future as the Defendant has ceased trading. The Claimant’s reputation is not disputed and it would be, almost, impossible for that reputation to be diluted or tarnished. As for detriment this would only be applicable if, as stated by the court in Intel, the economic behaviour of the average consumer of the goods and services of the Claimant changed as a result of the Defendant’s mark. In other words the average consumer of the Claimant’s goods and services decides, on seeing the Defendant’s goods and services, to buy or use the Defendant’s goods and services. If this interpretation is correct then is the Claimant really saying that a student who was proposing to study law at OXFORD UNIVERSITY will change his economic behaviour and decide to enroll on some course provided by the Defendant? Economic bahaviour is about money so that effectively the Defendant would benefit financially at the expense of the Claimant. Nothing could be further from reality. 16. The Defendant further relies on the Interflora case as far as “without due cause” allegation is concerned. The court in Interflora stated that where “without causing dilution or tarnishment and without, moreover, adversely affecting the function of the trade mark concerned, falls, as a rule, within the ambit of fair competition………and is not without due cause”. Accordingly the Defendant argues that its use of the word OXFORD is not “without due cause” and constitutes fair use. Passing off:” No man may pass off his goods as those of another” Lord Oliver 17. The essence of Passing off is deception or misrepresentation so as to induce a consumer to change his behaviour into buying the Defendant’s goods and services as opposed to the Claimant’s good and services. More simply by diverting trade from the Claimant to the Defendant so that buyer is thinking he is buying A’s goods but is actually buying B’s goods. However this pre-supposes that the goods and services are similar or identical. As has been stated above there is no similarity of goods between the Claimant and the Defendant. Which course(s) does the Claimant provide so that potential students mistakenly take a course provided by the Defendant? 18. Nevertheless there are numerous indicators on the Defendant’s website to distinguish its goods and services from the Defendant’s. These have been already stated in the defence and the court is asked to have regard to them. The Defendant further draws the courts attention to a passage from Office Cleaning Services Ltd. V Westminster Windows and General Cleaners Ltd (1946) 63 RPC 39 that “the court will accept comparatively small differences as sufficient to avert confusion”. The court will also take note that the Defendant voluntarily re-branded its website and put a clear and prominent notice on its website that it was not connected with or related to the Claimant prior to the proceedings being issued. These are not the actions of a Defendant seeking to “pass off” its goods and services as those of the Claimant. The Claimant alleges that its services are known generally as “Oxford law school” but has provided no evidence to support this claim. The Claimant comprises of a collegiate system without any specific law school as such. Indeed out of the 44 colleges which comprise the Claimant University only 31 provide law courses. 19. The Defendant furthermore argues that the Claimant did not suffer any damage which is an essential ingredient of Passing off. Here the only damage, apart from financial damage which the Claimant has not established, could be damage to reputation. However that could only occur if the Defendant was offering its own qualifications, which it is not, or claiming that its qualifications are “as good as” the Claimant’s qualifications or that Defendant’s qualifications are the Claimant’s qualifications (this must be the essential purpose of the Passing off) or that the Defendant’s courses are approved by the Claimant. None of these matters are made out by the Claimant. Indeed the Defendant submits that it is impossible for the Claimant to establish “damage” because of lack of similarity in the goods and services and the “different market” in which the Defendant operates or the different type of students that that the defendant seeks to attract. In addition the Defendant, to show its good faith, voluntarily re-designed its website and placed a clear and prominent notice on the Defendant’s website that it is not the Claimant. These are hardly the actions of someone seeking to pass off their goods and services as those of another. 20. In the circumstances the court is asked to dismiss the claim by the Claimant and award the Defendant nominal costs of lost revenue at £5 and £50 for having to establish a new website. Dated 30th August, 2013 Oxford Law School Limited
Posted on: Fri, 20 Sep 2013 05:42:26 +0000
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