Oxford University trademarks infringed
Posted: 3rd January 2014
Oxford University has come down hard on an institution that dubbed itself 'Oxford Law School' and used familiar navy blue and dreaming spires imagery to sign up students on its website. The university's admissions department had been put on alert after fielding calls from students confused between its 800-year-old law faculty and Hampshire-based Oxford Law School Limited.
The school insisted that it ‘had no knowledge of the university's reputation or goodwill’ and no intention of riding on its coat tails. It was submitted that only 'morons in a hurry' would mistake the school for the centuries old alma mater to 26 prime ministers.
However, the Intellectual Property and Enterprise Court found that there was a real risk of damage to the university's worldwide reputation for excellence and issued an injunction against the school, requiring it to change its registered company name, so that it no longer includes the word ‘Oxford’, and to hand over its website, www.oxfordlawschool.co.uk, to the university.
The school had emblazoned its website with a shade of navy blue and architecture reminiscent of Oxford until it received a letter before action from the Chancellor, Masters and Scholars of the University of Oxford. Only then did the website's prevailing colour change to lilac and a legal notice went up, warning students that the school was not connected to or endorsed by the university.
The company's website had also used the weighty Times New Roman font favoured by the university and a similar 'shield device'. The university could only point to four or five instances of perplexed students phoning its law faculty, but the Court found that the similarities in name and style were so great that 'a substantial majority of people' would be confused.
The Court ruled that the school had breached the university's trademarks – ‘Oxford University’, ‘University of Oxford’ and just plain ‘Oxford’ – and passed off its courses as connected to the seat of learning. The use of the Oxford Law School name in connection with 'basic and starter law courses' was likely 'erode the distinctiveness' of the nation's oldest university and impact on its high reputation.
The school’s chief executive pointed out that the company had recently ceased trading and had sought to come off the companies register. However, whilst acknowledging that Oxford Law School serves 'a slightly different market', the Court found that there was a 'serious risk' that use of the name would take 'unfair advantage' of the university’s goodwill.
The school's use of the word 'Oxford' was 'not fair competition' and, by employing the navy blue colour, shield and architectural imagery, it had 'sought to recreate a look and get-up' so similar to that of the university that it was 'likely to deceive potential law students'. The university had no way of monitoring the school's standards and the Court observed that 'there only has to be one bad or mediocre teacher, or one bad or mediocre course' for there to be an impact on the reputation of the country's number one law faculty.