Regent's Sparks over Regent's Park

Not a romp in the park.  Regent University v Regent's University London [2013] EWPCC 39 Patents County Court, 6 September 2013, is a decision of Mr Recorder Alastair Wilson QC that has so far received little attention, possibly because it's only an interim ruling from a junior court. This Kat has however decided to note it, since the defendant is located in London's lovely Regents Park where, as a mere kitten, this Kat launched his media career in the spring of 1952: a photograph taken of him in that park, sitting in his pram, was published on the front page of a national daily newspaper above a caption pronouncing him to be "The first baby of spring", or suchlike.

Regent, an American university based in Virginia Beach, was the proprietor of a Community trade mark (CTM) filed in November 2005 for the words REGENT UNIVERSITY. The mark was registered for the following services in Class 41:

"Educational services, namely, developing, arranging for and providing courses of instruction and training at the undergraduate and graduate levels; educational services, namely developing, arranging for and providing courses of instruction and training at the undergraduate and graduate levels via a global computer network".

Regent's College, based in London, was a private university which in July 2012 was granted the right to confer degrees. Following this stroke of good fortune, the College decided to rebrand as Regent's University London (RUL). Prudently, before it applied to change its name, the College undertook a consultation exercise to establish whether there were any objections to the proposed change of name.

Regent, one of the institutions contacted as part of the College's consultation, did not respond before the consultation process ended so, in October 2012, the College formally and no doubt confidently applied to change its name to 'Regent's University London'. In January 2013, Regent wrote to the College, enclosing details of its CTM. This did not impress the College which, sure that there was no chance of possibility of confusion, affirmed its intention to carry on. In March, the name change application was approved and the College was now officially RUL.

In May RUL applied to the Office for Harmonisation in the Internal Market (OHIM) for revocation of Regent's CTM, following which Regent launched proceedings for infringement of that CTM.  RUL then applied for a stay of the infringement proceedings under Article 104 of the Community Trade Mark Regulation, pending the outcome of its revocation proceedings at OHIM. Regent then hedged its bets by opposing the application for a stay and also applying for for provisional and protective measures under Article 104(3) of the same Regulation, seeking an injunction in the event that RUL be granted its stay.

Mr Recorder Alastair Wilson QC sided with RUL on this occasion, ordering a stay and also rejecting the request for interim injunctive relief. How so?

The stay

When considering an application to stay under Article 104, what -- if any -- 'special grounds' were there that were sufficiently compelling to outweigh the strong presumption in favour of granting a stay?  Here, while there were potentially significant consequences of infringement that could transform the possibilities of confusion into 'special grounds', their likely occurrence, and their seriousness if they did occur, were not so weighty as to tip the balance against ordering a stay.
While there was some possibility of confusion, the nature of the respective parties' activities was such that the vast majority of people involved or potentially involved with either of them would take great care over their selection of the university they approached. In this context the word 'London' in RUL's name was important because it did rather suggest that RUL, unlike Regent, was not a university based in the USA. Thus while Regent had a "respectable argument" that there were 'special grounds', they were insufficiently weighty to outweigh the strong presumption in favour of granting a stay to avoid the risk of irreconcilable decisions.

The application for provisional relief

If no injunction were granted, some of the damage that Regent would sustain was bound to be unquantifiable -- but it wasn't likely to be extensive or serious. On the other hand, predicted consequences of the grant of an injunction to stop RUL calling itself 'Regent's University London' would have been both unquantifiable and serious and if it dropped the use of the word 'Regent's' it would lose much of the advantage of the reputation it had already generated when it traded as Regent's College. Likewise, inability to use the descriptor 'University' would result in loss of the prestige associated with that word and which RUL had toiled so hard to obtain. Accordingly, the risk of unquantifiable damage to RUL if an injunction were wrongly granted would hugely outweigh any risk of such damage to Regent if an injunction were wrongly refused.

Says the IPKat, academe is full of universities and colleges with duplicate or highly similar names: one has only to think of the fact that Oxford and Cambridge both have colleges named for well-known religious personalities Jesus, Magdalen(e), St Catherine and St John [what about Wolfson, chimes in Merpel], and that the location is therefore generally crucial. But we now live in an age in which the online provision of distance learning services brings together a variety of institutions with names that are too close for comfort.  Regent University in Virginia Beach may be a long, long way from Regent's University London, but www.regent.edu and www.regents.ac.uk are far easier to confuse than are their terrestrial presences. The real question isn't whether there is a trade mark infringement or not, but how best the two universities can differentiate their brands to make sure that each gets the students -- and the reputation -- that it deserves. This is better done by talking than by suing.

This case will be back in court next Wednesday, and the Kat will be keeping an eye or two open for it.

Why Kats keep away from Regent's Park: 101 Dalmatians here (unless you live in a country with copyright laws), 102 Dalmatians here