Cranford Community College v Cranford College Ltd

A descriptive educational name may support passing off only if it has acquired a secondary meaning identifying the claimant’s services to the relevant public. Confusion caused solely by shared descriptive words is not, without more, a misrepresentation. The scope of protection for a descriptive name with secondary meaning is narrower than for an inherently distinctive name. The relevant public must be identified by reference to the people whose confusion could cause damage. Evidence of mistakes by delivery personnel, cleaners, taxi drivers or other peripheral individuals may not establish actionable confusion. A state school may rely on goodwill for passing off, but must prove goodwill associated with the name or logo relied upon.

The claimant operated a state secondary school in Cranford, west London. The defendant operated a nearby private post-school educational establishment under names including Cranford College and Cranford Academy. The claimant alleged passing off, sought revocation of the defendant’s registered trade marks under the Trade Marks Act 1994, and sought orders concerning the defendant’s company and domain names.

The central issues were whether the claimant owned goodwill associated with Cranford College or its logos, whether the defendant’s use caused a relevant misrepresentation and damage, and whether the trade marks had been registered contrary to the statutory provisions relied upon.

1. Claim dismissed. The claimant failed to establish passing off, grounds for revoking the defendant’s trade marks, bad faith, or that the defendant’s company name, domain names and trade marks were instruments of deception.

2. The conventional elements of passing off were goodwill associated with the claimant’s services, a misrepresentation by the defendant, and consequential damage. Goodwill may be protected even where the claimant is a non-trader, including a state school. However, the claimant had to prove goodwill associated with the particular name or logo relied upon.

3. Cranford College was prima facie descriptive because it literally described a college located in Cranford. The claimant therefore had to show that, by the relevant date, the name had acquired a secondary meaning among the relevant public, so that it referred exclusively to the claimant. That had not been proved. A descriptive name which has acquired secondary meaning may receive narrower protection than an inherently distinctive name, because its ordinary descriptive meaning remains relevant.

4. The relevant public principally comprised parents, guardians and students in the local catchment area. The evidence of confusion involved people such as taxi drivers, cleaners, delivery personnel and supply teachers. It did not show confusion among those whose mistaken belief could cause the alleged damage. The mistakes were consistent with confusion arising from two organisations using the same descriptive name, rather than a misrepresentation of trade origin.

5. There was no requirement for a common field of activity in passing off, but the closeness of the parties’ activities was relevant to the likelihood of confusion. The activities here were sufficiently close for a connection to be conceivable, but the evidence did not establish a misrepresentation. The claimant also failed to prove that the public identified it by its logos independently of the accompanying name.

6. Although deliberate intent may support an inference that deception resulted, the evidence did not establish that the defendant intended to misrepresent its services as those of the claimant. The claims under sections 5(4)(a) and 3(6) of the Trade Marks Act 1994 therefore failed. The requested revocation, assignment and company-name relief was refused.