NOCN (Formerly National Open College Network) v Open College Network Credit4Learning

The abbreviation “OCN”, standing alone, was descriptive of a type of educational organisation. It could not distinguish a particular undertaking or support goodwill and a passing-off claim. Membership or licensing agreements did not assign any alleged goodwill unless assignment was unambiguously required by their terms. A mark consisting of a descriptive term was invalid under Trade Marks Act 1994, s 3(1)(d). Infringement depended on the distinctive elements of the marks and signs. Similarity between logos, together with overlapping services and a likelihood of confusion, could establish infringement under s 10(2). Passing off likewise succeeded only where the defendant’s logo made an actionable misrepresentation of association.

The claimant, a national body for open college networks, owned trade marks including OCN, NOCN and several swoosh marks. The defendant, a regional open college network formed from former members of the claimant, continued using OCN-related names, a domain name and a logo after its membership ended.

The claimant alleged trade mark infringement and passing off. The defendant challenged the validity of the OCN and swoosh marks and relied on earlier rights, estoppel and statutory defences. The central issues were whether goodwill existed in OCN alone, whether any such goodwill had been assigned to the claimant, and whether the defendant’s signs infringed or passed off its services.

1. Goodwill and the term OCN. The court held that “open college network” and its obvious abbreviation “OCN” were descriptive terms for a type of educational body. Neither term identified a sufficiently defined class of organisations capable of generating goodwill in the term itself. The claimant’s goodwill was associated with NOCN and its swoosh mark, while each regional network’s goodwill was associated with its regional or other distinctive name. The defendant therefore had no earlier right in OCN capable of supporting passing off or the statutory defences. [2015] EWHC 2667 (IPEC), paras 45–51.
2. Alleged assignment. Even if goodwill had existed in OCN, the membership and licensing documents did not assign it to the claimant. An assignment by conduct required no particular formality, but an implied assignment could arise only if any other construction was unambiguously inconsistent with the express terms. The agreements were workable on the basis that a member could continue using OCN after membership ended, which was inconsistent with an assignment of goodwill to the claimant. Paras 52–55.
3. Trade marks. The counterclaim under s 5(4)(a) of the Trade Marks Act 1994 failed because no relevant earlier right existed. The OCN Mark was nevertheless invalid under s 3(1)(d), since OCN was descriptive. The NOCN Mark was not infringed because the only common element was the descriptive acronym OCN. The swoosh marks were infringed under s 10(2) by the defendant’s logo: the services overlapped, the logos were visually similar and there was a likelihood of confusion. Paras 57–65.
4. Defences and passing off. No defence arose under s 11(3), s 48(1) or s 48(2), and the common-law estoppel defence was not made out. Use of OCN alone could not constitute an actionable misrepresentation. Use of the defendant’s logo did constitute a misrepresentation that the defendant was associated with the claimant. The trade mark infringement claim therefore failed except in relation to the swoosh marks and the defendant’s logo. The passing-off claim succeeded only in relation to that logo. The OCN Mark stood revoked. Paras 66–72.
5. The allegation that the swoosh marks were applied for in bad faith was not distinctly proved. The court applied the need for a serious allegation of bad faith to be distinctly proved and for an overall assessment of the applicant’s conduct. Para 64.