When one charity sues another - NOCN v Open College Network Credit4Learning

An open college network is a regional organization that accredits adult education courses offered by educational institutions and employers. The claimant was established to coordinate some of those organizations. It trades under the following signs:

It has registered those signs as trade marks as well as the letters OCN and NOCN for accreditation and certification services in class 42 as well as other goods and services.

The defendant is an open college network which was affiliated with the claimant until 2006. Until judgment in these proceedings, it traded under the following sign:

The claimant sued the defendant for trade mark infringement and passing off. The defendant counterclaimed for invalidation of the claimant's registrations.  The action and counterclaim came on before His Honour Judge Hacon in NOCN (Formerly National Open College Network) v Open College Network Credit4Learning [2015] EWHC 2667 (IPEC) (25 Sept 2015)

It will come as little surprise even to those who have not read the judgment that the claim failed except in respect of the use of the dots device. The judge held that such use infringed the combined device and word marks under s.10 (2) of the Trade Marks Act 1994 and amounted to passing off. It will be equally unsurprising that he found that the letters "OCN" were and remain entirely descriptive. Consequently, none of the claimant's marks was infringed by the use of those letters and such use did not constitute passing off.  His Honour also declared the OCN letter mark invalid under s.47 (1) of the Act,

In a postscript to his judgment Judge Hacon made this final observation:

"I now know that between them the parties, both charities, have incurred well over £400,000 on fees in this litigation. A very strong recommendation to settle at the case management conference was not taken up. The laudable cause of encouraging adult education will presumably have to endure an equivalent cut in funding solely because this dispute was not resolved at an early stage. Such an outcome is much to be regretted."

There is, however, some good stuff in this judgment.  At paragraph [22] he reaffirmed that goodwill is capable of subsisting in a business which consists of educational and charitable work of the sort carried on by the parties and other open college networks and referred to British Diabetic Association v The Diabetic Society [1996] FSR 1 as an example. Secondly his analysis of the origin and ownership of the goodwill where he rejected both parties' claims to goodwill associated with those letters in paragraphs [45] to [55].

Should anyone wish to discuss this case note or trade mark or passing off law in general, he or she should not hesitate to call me on 020 7404 5252 during office hours or send me a message through my contact form.


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