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Intellectual Property Enterprise Court
You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> NOCN (Formerly National Open College Network) v Open College Network Credit4Learning  EWHC 2667 (IPEC) (25 September 2015)
Cite as:  EWHC 2667 (IPEC)
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INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
(formerly NATIONAL OPEN COLLEGE NETWORK)
|- and -
|OPEN COLLEGE NETWORK CREDIT4LEARNING
James St Ville (instructed by Geoffrey Leaver Solicitors LLP) for the Defendant
Hearing dates: 16-17 July 2015
Crown Copyright ©
Judge Hacon :
The rights in dispute
(1) UK trade mark no. 2,317,870 for the letters 'OCN' ("the OCN Mark");
(2) UK trade mark no. 2,317,869 for the letters 'NOCN' ("the NOCN Mark");
(3) Ten UK registered trade marks (which I need not distinguish), each of which consists either of 'nocn' (in one case) or 'ocn' (in the remaining instances) together with a national or regional designation and a 'swoosh' device ("the Swoosh Marks"). An example is the Eastern Region Swoosh Mark, UK registered trade mark no. 2,578,769 :
(1) The Defendant was the proprietor of earlier rights arising from the use of 'OCN' in respect of (a) the name OCN itself and (b) signs similar to the Swoosh Marks ("the Swoosh Signs") at the time the OCN Mark and Swoosh Marks respectively were registered, such that their use was at all times liable to be prevented by the Defendant by virtue of the law of passing off. Those Marks are therefore invalidly registered pursuant to ss.5(4)(a) of the Trade Marks Act 1994 ("the Act").
(2) The OCN Mark at the time it was registered consisted exclusively of a sign or indication which had become customary in the current language or in the bona fide and established practices of the trade, contrary to s.3(1)(d) of the Act.
(3) The Swoosh marks were applied for in bad faith contrary to s.3(6) of the Act.
(1) The Defendant used in the course of trade, in a particular locality, earlier rights which applied only in that locality, see s.11(3) of the Act. The earlier rights in question were derived from the use of 'OCN' in the regions of the UK in which the Defendant's predecessors operated at the date of registration of the OCN Mark. The Defendant contends that the use of those earlier rights was protected by virtue of the law of passing off.
(2) The Claimant is estopped from enforcing any rights it may have against the Defendant by reason of its delay in doing so and thereby creating an implicit representation that it had no objection to the Defendant's acts complained of. I will refer to this as 'the common law estoppel defence'.
(3) If the Claimant is right in its contention under s.48(1) of the Act, the Claimant may not oppose the Defendant's use of the 'OCN' trade name, see s.48(2) of the Act.
(1) a common law defence of estoppel; and
(2) an entitlement to use the OCN trade name pursuant to s.48(2) of the Act if the Claimant is entitled to rely on s.48(1) of the Act.
The history of the goodwill
The Claimant's account in relation to goodwill associated with 'OCN'
"As you will be aware, the NOCN Annual General Meeting in July this year agreed to move to a new basis for membership of the NOCN during 1998-9, based on the establishing and operation of a licence for OCNs to offer awards within NOCN's accreditation framework. A timetable for moving towards these licensing arrangements has been established and is enclosed with this letter. My purpose in writing to you now is to invite you on behalf of your OCN to indicate to NOCN whether or not you wish to apply for such a licence.
All those OCNs that indicate an intention to apply for a licence will then constitute the membership base of the new organisation that NOCN will establish later this year, and on which your OCN has already been consulted."
"3.3 In furtherance of the Objects, the Charity may exercise the following powers:
3.3.4 to acquire, construct, maintain, alter, improve, hire, take on lease or licence and (subject to such consents and such conditions as may be required by law) to change or otherwise dispose of any real or personal property;
3.3.14 to issue licences to members of the Charity, to offer awards within the Charity's credit framework and to monitor, withdraw and withhold such licences. Such licences will cover all those actions undertaken by the members which affect the credibility and currency of awards offered in pursuance of the Objects;
6. If the Charity is wound up or dissolved and, after all its debts and liabilities have been satisfied, there remains any income and property it shall not be paid to or distributed among the members of the Charity, but shall be given or transferred to some other charity or charities having objects similar to the Objects which prohibits the distribution of its or their income and property to an extent at least as great as is imposed on the Charity by Clause 3.4 of the memorandum, chosen by the members of the Charity at or before the time of dissolution and if that cannot be done then to some other charitable object."
"6.1 The holding of a Licence from NOCN confers upon the Licence-holder both the right and the obligation to use the term 'Open College Network' in the title of the organisation.
6.4 The name of the OCN must be first approved by NOCN as a condition of holding this Licence. Any change to the name of the organisation must be first agreed with NOCN.
6.7 The OCN shall at all times represent itself to third parties as being licensed to provide its services by NOCN.
6.8 The OCN shall not allow any third party to use its name or a similar name to its name and shall notify NOCN immediately if it becomes aware that any third party is using its name or a similar name."
"An OCN is required to provide an explicit written statement, which indicates that it will:
1.1 conform with, and abide by, the standards and criteria of the licence, all operational guidance and any other documents relating to OCN provision, as published from time to time by NOCN"
The Defendant's account
"This Development Paper presents together for the first time, a review of past achievements and current developments of Open College Networks (OCNs) in England and Wales."
Chapter 2 is headed "The Nature of Open College Networks" and starts as follows:
"Open College Networks are collaborative and representative bodies which bring together organisations involved in the provision of learning opportunities for adults, and in providing information and guidance about them. These groupings are commonly termed Networks or Federations.
While Open College Networks have developed in different ways they now all offer flexible, accessible and rigorous accreditation systems which are locally based and controlled but which have wider recognition."
This document, along with other documents I was shown, used 'Open College Network' interchangeably with 'OCN' and used both descriptively as a means to identify the type of body described in the passage above. Neither Mr St Ville nor Ms Bowhill directed my attention to the 'Glossary of Terms' at the end of the 1989 UDACE Paper, but one of the definitions is particularly relevant, which I quote along with the next for completeness:
"Open College Network: A generic term referring to Open Colleges which may or may not be called 'Open College Federation'. (For example, the Open College Network in North and East London is called Access to Learning for Adults – ALFA).
Open College Federation: A specific title taken by many Open Colleges, dating back to the mid 1970s."
Analysis of the rival claims to goodwill associated with 'OCN'
The OCN Mark
The NOCN Mark
The Swoosh Marks
" A number of particular points are worth highlighting. First, bad faith is a serious allegation which must be distinctly proved. Secondly, it includes not only dishonesty but also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable experienced men in the particular area being examined. Thirdly, it is intended to prevent abuse of the trade mark system; for example where the applicant knowingly supplies untrue or misleading information in support of his application or abuse vis-à-vis third parties. Fourthly, the invalidity of the application is not conditional on the trade mark itself being either registrable or unregistrable in relation to any goods or services of the kind specified. The objection is absolute in the sense that it is intended to prevent abuse of the system for requiring title to a trade mark by registration. Finally, in order to determine whether an applicant is in bad faith the court will make an overall assessment."
On the limited evidence I have, and particularly bearing in mind the evidence of Mr Hastings-Evans, I am not satisfied that the Defendant has distinctly proved that the dealings of the Claimant in relation to the Swoosh Marks fell short of the standards of acceptable commercial behaviour observed by reasonable experienced individuals in OCN activities. I conclude that the Swoosh Marks are not liable for revocation on the ground of bad faith.