In a case which underlines that the risk of public confusion is very often the deciding factor in trade mark disputes, one of Britain’s only two private universities scored an early success in a trans-Atlantic dispute with an evangelical American university with a similar name.
Regent’s University London (RUL) had won a reputation for excellence since it was established as Regent’s College in 1984 but had only recently achieved the right to call itself a university. Its proposed change of name triggered community trade mark infringement proceedings brought by Regent University (RU), which was established in Virginia by well-known evangelist Pat Robertson in 1978.
RU objected to RUL’s new moniker on the basis that it had the potential to confuse students, who might apply to the wrong institution, prospective employers of alumni and others. RU relied upon three actual instances in which such confusion was said to have occurred and expressed concerns that its reputation might be damaged by RUL statements that were not in line with RU’s strongly Christian ethos.
However, in granting RUL a stay of the infringement action pending the outcome of its application to revoke the relevant trade mark, the Patents County Court noted RU’s limited presence in the UK higher education market and that many academic institutions have similar or identical names. The Court noted, amongst other things, that there are five ‘Victoria Universities’ in the English-speaking world.
Whilst recognising the possibility of confusion between RUL and RU, the Court noted that there was no suggestion that the former had chosen its name in anything other than good faith. Despite RU’s plea that it was threatened by ‘serious and unquantifiable damage’, the Court found that the risk of confusion was not so great as to displace the presumption in favour of granting the stay.
Pending final resolution of the proceedings, the Court suggested that RUL should be restricted from using the name ‘Regent’s University’ except where immediately followed by the word ‘London’ and that a strap line be placed on every page of its website containing words to the effect that RUL is unconnected to RU.