School fails in passing-off claim

Posted: 1st October 2014

CollegeA leading state secondary school which was incensed when a similarly-titled private adult education college opened just 500 metres away has failed in a High Court bid to force the college to change its name and abandon its trade marks.

Heavily over-subscribed Cranford Community College (CCC) fiercely objected to the presence of Cranford College (CC) nearby. It accused CC, which draws its students primarily from abroad, of feeding off its goodwill, confusing the public and giving itself a name which served as ‘an instrument of deception'.

The school expressed concerns that any perceived connection to CC could damage its reputation and lead to a 'negative spiral' of fewer students and lower funding. It demanded that CC change its name, as well as its Internet domain names, and argued that its trade marks were invalid.

The Court acknowledged that CCC had achieved academy status and was recognised as 'a particularly fine school' with its places much sought after. It was conceivable that prospective pupils and their parents might mistakenly believe there to be a connection between the two institutions. The school had also produced a number of examples of emails and post being misdirected.

But in dismissing the school’s passing off claim, the Court found it 'entirely unlikely' that local parents and pupils would be confused in a way that would cause it any damage. There had been no misrepresentation on the part of CC, let alone an attempt to deceive the public. There were thus no grounds for revoking CC’s trade marks or requiring it to assign any of its rights.