Collegiate collision in court as Cranfords clash

Back to school ... Cranford Community College v Cranford College Ltd [2014] EWHC 2999 (IPEC), decided by Judge Richard Hacon on 19 September, is another in the line of swift, simple decisions of the Intellectual Property Enterprise Court, England and Wales, which demonstrate the virtues of that humble tribunal.

Cranford Community College (originally Cranford Community School) had since 1975 been a state secondary school. As its name might suggest, the school was situated in Cranford, within the London Borough of Hounslow --home to Heathrow, the world's busiest airport. The school had been using the name Cranford Community College ('CCC') since 1997.

Cranford College Ltd ('CCL'), a privately owned educational establishment, offered courses for students of post-school age. Incorporated in 2010, it commenced student enrolment in 2011, trading as "Cranford College" and (in advertising) as "Cranford Academy". By curious coincidence CCL was also located in Cranford, within half a mile of CCC.

In its passing off proceedings CCC relied on goodwill in its educational services since 1997 associated with the three names with which it claimed to be associated: "Cranfield Community College", "Cranford College" and "Cranford". CCC also relied on goodwill associated with its logos which included an image of a bird, to wit a crane [as the judge explained, the name 'Cranford' was derived from the Anglo Saxon for 'ford frequented by cranes']. Said CCC, CCL's use of names and domain names including the word "Cranford", and its use of logos and trade marks featuring a bird ["apparently a pigeon", observed the judge, displaying an impressive degree of ornithological knowledge], constituted an actionable passing off. In a further attempt to destroy the basis of CCL's branding, CCC also applied to revoke CCL's trade marks.  We are blameless, said CCL: CCC's names were so descriptive that they provided no basis for a passing off claim. Even if this was not the case, given the descriptive nature of CCC's names and logo, even the minor differences in the trading style used by CCL were enough to afford a defence since they were sufficient to avoid the risk of misrepresentation causing confusion.

Judge Hacon had no difficulty in dismissing the claim.

* In principle, although the law of passing off was primarily concerned with goodwill in the business of a trader, it could be relied on to protect goodwill enjoyed by non-traders such state schools, churches and charities.

*However, CCC still had to establish that the term "Cranford College" had acquired a secondary meaning among the relevant public, who would believe that it referred to CCC and that it would not be taken to refer to any other educational establishment in Cranford. This particular relevant public consisted of individuals living in the London Boroughs of Hounslow, Ealing ["the Queen of the Suburbs"] and Hillingdon.

* On the evidence, CCC failed to show that it owned goodwill associated with the name "Cranford College", or that the relevant public treated that name as referring only to CCC and not to any other body. The goodwill element of passing off had not been established in relation to the names and that was enough to kill off the claim based on the names.

* What about goodwill in CCC's logos? While these were distinctive, there was no evidence that the public identified CCC's services by reference to the logos rather than CCC's trade names. In any event it had not been shown that CCL deliberately intended to pass itself off as CCC [Merpel can't imagine why a private tertiary college should want to pass itself off as a state secondary school anyway] and there was insufficient evidence of any misrepresentation by CCL or confusion on the part of the relevant public (paras 62-63). No misrepresentation had been established in respect of the logos (para.64).

* There were no grounds for revoking CCL's trade marks.

This Kat thinks the court got it just right.  Merpel is still wondering why this case ever got as far as a hearing. Try as she might, she just couldn't visualise it succeeding. Even if it had, she finds it hard to conceive of CCC suffering the sort of loss -- and recouping the sort of damages -- that might make the action worth bringing. An injunction might have forced CCL to make some token changes in its name and logo, she thinks, but would that have been worth the hassle?

If you really want to be confused, as this Kat was, remember that there is an institution that is better known than Cranford or Cranford: Cranfield.

Cats' Colleges here, here and here