The Intellectual Property Enterprise Court has dismissed a claim for passing off by a state secondary school which brought the claim against a nearby private school which had recently set up only 500 metres away, using similar names and logos.  Academies should think about how best to protect the brand, image and ‘goodwill’ associated with their institution.

The facts

Cranford Community College, who brought the claim, is a state-funded secondary academy in the London Borough of Hounslow.  Cranford College is a private college providing further and higher education to students of post-school age. Cranford College was set up about four years ago whereas the academy had been known as ‘Cranford Community College’ since 1997.

The academy and Cranford College are located approximately 500 metres apart in the area of west London known as Cranford.  Along with similar names, both colleges had similar logos (both birds) and similarly names websites.  The court dismissed the claim for passing off ruling that academy had failed to establish goodwill in its name and logos.

Analysis

Non-traders

The judge accepted that non-trading entities, such as charities and state-funded schools, could protect their goodwill (or good reputation) just as a commercial business can protect its goodwill.  Institutions therefore should be taking steps to protect its goodwill, for example by protecting its logos through registration as trade marks.

Descriptive names

Often academies are named, like Cranford Community College, after the catchment area for the school. The court held that Cranford Community College had failed to establish that its name had acquired a secondary meaning so that Cranford Community College could only mean that particular college rather than any college located in the Cranford area.  The court said that it is possible for an institution to establish that its name had acquired a secondary meaning, citing Eton College as an example.  In the minds of the public, Eton College can only mean one college rather than any college in Eton.  The court said protecting a general name is possible, but it is a rather difficult point to establish in fact.

This is an interesting decision that academies should be aware of as brand, image and reputation are key ingredients for the success of an academy. Long established institutions should be wary of new entrants who may be competing for students. Academies should consider protecting their brand and image through intellectual property rights.