The recent case of Student Union Lettings Limited and Essex Student Lets Limited, http://www.bailii.org/ew/cases/EWHC/IPEC/2018/419.html demonstrates the importance of the London-based Intellectual Property Enterprise Court in providing a cost effective dispute resolution forum in the United Kingdom. The judgment reveals that the Claimant here had an income of around £464,000 in 2014/15 and the Defendant is quoted as having a turnover of around £47,000 for the period from 29 September 2014 to 29 March 2015. The cost of High Court litigation would most likely have been beyond both parties but they were, nevertheless, able to have their dispute determined by an Intellectual Property specialist court.
The dispute arose from the rebranding of the Defendant’s business, in autumn 2014, to SU LETS. The Claimant had been using the term SULETS in connection with essentially the same business since 2011/2012 and registered the trade mart SULETS as of 27 March 2015. With the Claimant’s registration of SULETS being dated after the date on which the Defendant rebranded its business to SU LETS, there was a question over whether that prior use of the SU LETS mark gave the Defendant a defence to an action for trade mark infringement, the Judge having decided that the marks SULETS and SU LETS were identical, and that in the absence of any defence, there would be a finding of trade mark infringement.
Although the Defendant had used its trade mark SU LETS prior to registration of the trade mark SULETS by the Claimant, this did not save them, because of the Claimant’s even earlier use of their SULETS mark. In particular, the Judge found that although the Claimant only offered accommodation letting agency services to the students of the University of Leicester and the De Montfort University in Leicester, they had generated a nationwide goodwill in the name by October 2014, because their tenant customers had come from all over the United Kingdom. In the United Kingdom, there is a long tradition of students going away to a university, which is not located in their home town. Indeed, many prospective students seem keen to move as far away from their family home as possible. I am fully expecting my daughter to inform me, in due course, that she intends to study in Swansea/Aberdeen!
The claim in relation to trade mark infringement and passing off, therefore, succeeded. As well as demonstrating the benefits of the Intellectual Property Enterprise Court, this case once again highlights the importance of conducting trade mark searches before any rebranding is carried out. It also highlights the importance of registering trade marks early. Although the Claimant prevailed in this case, they would have made life a lot easier for themselves, had they sought registration of their trade mark when they started using that sign, back in 2011/12. The Defendant would then have had no prior use case to argue and the matter would certainly have settled before proceedings had to be issued.
Authored by Cathy Ayers