Oxford University feeling blue following failed cancellation action

United Kingdom

In Oxford Limited v HS Tank & Sons, a hearing officer at the UK Trademark Registry has dismissed an invalidation action, brought by a company that represents the interests of Oxford University, against a registration for the mark OXFORD BLUE. He held that although the plaintiff had built up a reputation in the trademark in relation to sporting achievements, it had no goodwill in the mark because it had not used it in trade.

HS Tank & Sons, a jacket manufacturer based in Birmingham, United Kingdom, registered the trademark OXFORD BLUE in 1995 for clothing. In 2002 Oxford Limited applied for invalidation of the mark based on passing off, citing (i) the university's use of the mark since 1829, and (ii) the considerable goodwill and reputation built up by the university in OXFORD BLUE in connection with its sporting achievements. Oxford claimed that the term was associated with the dark blue sporting colour of the university and with its sportsmen and women, who are known as 'Oxford Blues'.

Oxford stated that it had not commercially exploited OXFORD BLUE through merchandise as to do so would be detrimental to the reputation and goodwill of the university. However, it did adduce some evidence of the use of OXFORD BLUE in relation to ties and blazers together with evidence of the reputation of the Oxford Blue sports award. Oxford further argued that HS Tank's use of OXFORD BLUE was an attempt to establish a link with Oxford University, its sports teams and its students. This use was likely to cause confusion among consumers and would cause damage to Oxford.

The hearing officer did not accept Oxford's claim that OXFORD BLUE described a colour entirely associated with Oxford University. His view was that it was in fact entirely associated with a colour.

Next the hearing officer said that even if the term 'Oxford Blue' had a reputation as a sporting award, the case appeared to be a "classic example of reputation without goodwill". He pointed out that the Oxford Blue award was not for sale. Although the award could attract people to the university for the purpose of gaining an award that carried a certain status, the hearing officer stated that "this could not be regarded as the magnetic effect of goodwill as understood in law". Goodwill, he continued, had to be generated in the course of business and, as Oxford had readily admitted, it had conducted no such business.

He dismissed Oxford's submission that it had used the mark in relation to clothing on the basis that it was not representative of trade under the mark. Instead, it was either symbolic of receipt of the award or a badge of allegiance to the university. The hearing officer noted that although it seemed unmerited that any business could take advantage of the "cache of reputation" that had accumulated around the award, Oxford had not capitalized on this reputation. On the contrary, it was HS Tank who had the requisite goodwill in OXFORD BLUE in relation to clothing as it had carried on significant trade in that area under the mark.

Accordingly, the hearing officer dismissed Oxford's invalidation claim.

Rachel Aaron, Hammonds, London

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