02 May Trade mark enforcement success for Serjeants
Serjeants’ expert trade mark attorneys recently triumphed at the specialist Intellectual Property Enterprise Court with a successful trade mark infringement claim that prevented a similar business to that of its client operating under an almost identical name.
Whilst at first that seems like a straightforward case, the difficulty arose over where and when the two parties started using the trade mark.
Summary of the case
Our client, Student Union Lettings Ltd, is a charitable company which is wholly-owned by the Students’ Unions of the two Leicester Universities and provides a lettings agency service for students of those Universities. Since July 2012, it has traded as SULETS and has used a logo such as this one:
On 7 March 2015, our client successfully applied for a UK Trade Mark registration for SULETS. It then found out that in October 2014 a company called Essex Student Lets Ltd (ESL) had started trading as SU LETS including using a logo as follows:
ESL is a company owned by the University of Essex Students’ Union and it provides a lettings agency service for students of that University. Our client was aggrieved that the use of SU LETS by ESL could cause confusion amongst its customers, particularly in on-line search results, and therefore sought to stop ESL trading as SU LETS by bringing court proceedings for trade mark infringement and passing off.
Unsurprisingly, the court found that SU LETS (as used by ESL) was in practical terms identical to our client’s mark SULETS. Ordinarily, that would have entitled our client to succeed in its trade mark infringement claim. However, although our client had used the trade mark first, in Leicester, the defendant had also started using it in Essex – and crucially had done so before our client applied for its trade mark registration. ESL argued that this meant that, at the time our client applied for its trade mark registration, each party was using the trade mark only in its local area and our client’s trade mark registration could not stop ESL continuing its honest use of the trade mark in Essex.
ESL relied on an earlier case, which suggested that estate agents normally serve only local customers. However, we were able to persuade the court that student lettings agencies are not like normal estate agents because their customers come from all over the country and their use of their trade mark is therefore on a national scale. As such, it was right to consider the national picture, in which our client was the first to use the trade mark and was therefore entitled to enforce its registration against ESL. For this reason, our client succeeded in its claim for trade mark infringement.
The claim for passing off also succeeded on similar reasoning – that our client had a national goodwill established through the use of SULETS before ESL started using SU LETS.
Trade mark expertise
If you are using a trade mark but have not yet registered it, this case highlights the need to do so as soon as possible. We are experienced both at obtaining trade mark registrations and at settling trade mark disputes, usually without the need to go to court.