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IPEC decide in student let trade mark squabble

Written by Ellis Sweetenham on 06 April 2018

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Student Union Lettings Ltd v Essex Student Lets Ltd [2018] EWHC 419 (IPEC), [2018]

Facts:

The Claimant company carried out business as a lettings agency for university students in Leicester.

It provided accommodation in private halls of residence and had charitable status.

 It was the owner of a UK registered trade mark for the word 'SULETS' in respect of various services in classes 36 and 37, including 'accommodation letting agency services'.

The Defendant company was a wholly owned subsidiary of the University of Essex Students' Union, and provided accommodation for the students in private residences, rather than in halls of residence.

In October 2014, it was decided to rebrand the Defendant to SU LETS.

The Claimant became aware of the Defendant's use of SU LETS at the end of 2015.

In 2016, the defendant revamped its sign.

In January 2017, the Claimant commenced proceedings for trade mark infringement under s 10(1) or (2) of the Trade Marks Act 1994 (TMA 1994) and for passing off.

Issues:

The issues considered by the Intellectual Property Enterprise Court were as follows

(1)    Whether the Defendant had infringed the mark under section 10(1) of the Trade Marks Act 1994, which states a trade mark is infringed if an identical mark is used in relation to identical goods and services.

(2)    Whether the Defendant had infringed the mark under section 10(2) of Trade Marks Act 1994, which breaks down to

(i)                  whether the Defendant's signs were identical or similar to the mark; and

(ii)                whether their use in the course of trade in relation to student letting agency services resulted in a likelihood of confusion with the mark.

(3)    Whether the defence under the section 11(3) Trade Marks Act 1994 applied, which considered the locality of the two marks used

(4)    Whether passing off had occurred, which considers if damage has been caused to a business’s reputation through the use of an identical or similar mark

Decision:

Firstly, focusing on issue 1, the key consideration for the court was whether ‘SULETS’ could be deemed as identical to ‘SU LETS’.

The Court ruled that the space was insignificant in the word mark and would go unnoticed by the average consumer. Therefore, for the purposes of section 10(1), the two marks were visually and conceptual identical.

Subject to any defence being available under section 11(3), trade mark infringement under section 10(1) was satisfied.

Moving to issue 2, and looking at logos used by the Defendant, the court must decide if the level of similarity between the marks is enough for confusion to occur within the public as to the source of both businesses.

The court considered both the original logos used by the Defendants and those used after their revamp and deemed them both to be substantially similar to the Claimants marks.

Therefore, the use of high similar marks in relation to identical services, is likely to lead to a likelihood of confusion. Therefore, the court ruled the existence of trade mark infringement also under section 10(2), subject to a potential defence.

The existence of trade mark infringement, in the case, hinged on whether the Defendant could rely on the defence under section 11(3) of the Trade Marks Act 1994. The Defendant argued that the Claimant only has goodwill in the locality of Leicester.

However, the court disagreed, stating that due to the nature of students moving away from home to other parts of the UK, the Claimant had a nationwide marketing scheme and therefore the Claimants goodwill extends beyond Leicester.

The Defendant was, therefore, not entitled to rely upon the defence provided by section 11(3) Trade Marks Act 1994, and so the claim for infringement succeeded.

The last issue for the court to consider was a claim under the common law offence of Passing off.

As previously considered by the court, the Claimant had sufficient goodwill in their mark, which was established in 2014, at the time in which the Defendant commenced use of the infringing marks.

The use of the Defendant’s mark was enough to establish a misrepresentation of the Claimant’s goodwill.

The affect of the Defendant’s action had not caused loss of direct sales due to the different geographical locations, however there was a risk and the potential of causing damage, through the erosion of the Claimant’s mark distinctiveness and if the Defendant’s services was somewhat flawed.

Therefore, the claim for passing off was also successful.

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