NOCN (formerly National Open College Network) v Open College Network Credit4Learning –  All ER (D) 125 (Sep)
Since the 1980s, a number of organisations across the country, known as ‘open college networks’, had been set up to encourage the development of routes to higher education for adults, operating in a particular region of the United Kingdom.
In 1987, a national body was set up to co-ordinate the activities of those local organisations. That was the predecessor of the claimant.
The claimant owned a number of trade marks including a UK trade mark for the letters ‘OCN’, a UK trade mark for the letters ‘NOCN’ and ten UK registered trade marks, each of which consisted either ‘nocn’ or ‘ocn’.
The defendant was an open college network.
In May 2006, following disagreements between the claimant and defendant, a membership agreement between them came to an end. There followed a series of disputes by correspondence, culminating in the present proceedings.
At the core of the dispute was the question whether the defendant was entitled to identify itself as an ‘OCN’, having relinquished membership of the claimant’s organisation.
The claimant complained that the defendant had traded under the name OCN and the name OCN Credit4Learning therefore infringing each of its trade marks.
The defendant denied infringement and counterclaimed for a declaration that the OCN mark and the swoosh marks be revoked on the grounds that, first, the defendant was the proprietor of earlier rights arising from the use of ‘OCN’ in respect of the name OCN itself; and signs similar to the swoosh mark. This therefore means the marks were invalidly registered, as stated under s 5(4)(a) of the Trade Marks Act 1994.
Secondly, the OCN mark, at the time it had been registered, had consisted exclusively of a sign or indication which had become customary in the present language or in the bona fide and established practices of the trade, contrary to s 3(1)(d) of the Act.
Thirdly, the swoosh marks had been applied for in bad faith, contrary to s 3(6) of the Act.
Further, the claimant claimed ownership of goodwill in its business, which goodwill it said was associated with each of the letters OCN; the letters NOCN; and it’s swoosh mark.
The claimant alleged that the defendant was liable for passing off by reason of its trading under the name OCN; the name OCN Credit4Learning; the defendant’s domain name; and the defendant’s logo.
- The development and ownership of Goodwill in the name ‘OCN’
- The validity of the ‘OCN’ mark
- The alleged infringement of the ‘NOCN’ mark
- The validity and infringement of the ‘Swoosh’ marks
- Any evidence of passing off
It was not accepted that goodwill had ever subsisted which had been associated with the letters ‘OCN’ standing alone as an abbreviation of ‘open college network’. The term was entirely descriptive
Since its incorporation in February 1999, the claimant had acquired goodwill in its business. However, that goodwill could not be attached to a purely descriptive term.
In addition, it was not doubted that each individual open college network had always owned goodwill in its business. Each had been held responsible for the character and quality of its services. Therefore the goodwill developed is in relation to each specific college not the abbreviation ‘OCN’ as a whole.
In respect of the OCN mark, , the defendant’s counterclaim in relation to the validity of the mark, pursuant to s 5(4)(a) of the Act failed, but it succeeded, pursuant to s 3(1)(d) of the Act.
There was no challenge to the validity of the NOCN mark
The swoosh marks had not been invalidly registered, pursuant to s 5(4)(a) of the Act, because the defendant had not been the owner of any relevant earlier right. Further, the swoosh marks were not liable for revocation on the ground of bad faith. Furthermore, the swoosh marks were not infringed by the OCN sign, the name ‘OCN Credit4Learning’ or the defendant’s domain name, for the reason discussed in relation to the NOCN mark. Therefore, the claim for trade mark infringement failed
With respect to passing off, the goodwill in the claimant’s business had been associated with the trade name ‘NOCN’ and the claimant’s swoosh mark, but not ‘OCN’. The claimant was entitled to rely only on the goodwill in its business associated with ‘NOCN’ and it’s swoosh mark. Any confusion with ‘NOCN’ could have arisen only because of the defendant’s use of the descriptor ‘OCN’. Such use could not have given rise to an actionable misrepresentation. On the other hand, use of the defendant’s logo had constituted a misrepresentation that the defendant had been associated in the course of trade with the claimant Therefore, the claim for passing off succeeded, but only in relation to the defendant’s logo.