Regent’s University London

Protecting a brand against an aggressive claimant

Regent's University London was established in 1984 as Regent's College, a higher education institution primarily intended to provide American students with a study abroad programme. In July 2012, it was announced that Regent's College had been granted taught degree-awarding powers (TDAP). The College then began the process of becoming a university. Part of this process, which involves an application to the Privy Council and requires approval of the proposed name of the new institution.

Case Study

Case Type

Trade mark opposition defence

Action

Litigation

Outcome

Opponent lost its trade mark rights

Issue:

We advised and made submissions to support the application. As part of the process, notification of the intended name has to be sent to an agreed list of organisations, who must raise any objections they may have by an agreed deadline. No objections were received during the objection period and in March 2013 the UK's Department for Business Innovation and Skills announced that Regent's College had met the criteria to become a university, under the name Regent’s University London.

At the end of the objection period, Regent University, a private Christian university based in Virginia Beach, USA wrote to Regent’s University London. It raised objections to the selected name on the basis of an EU trade mark registration for ‘Regent University’. In an attempt to deal with the issue, we responded to the complaint and highlighted that our client’s use substantially pre-dated theirs. As a result, Regent’s University London had prior rights, but also offered to enter into a co-existence agreement. This failed to settle the matter and Regent University threatened to issue proceedings for trade mark infringement against our client, which would have had a substantial impact on its plans to rename its institution.

Action:

Prior to the proceedings being issued, we filed applications at what is now the EU Intellectual Property Office (EUIPO) to cancel the registration on which Regent University relied. Regent University then issued and served a claim form, alleging trade mark infringement.

As the applications to cancel the trade marks had been filed first, we applied to the Court for a stay of proceedings under the provisions of the Community Trade Mark Regulations. The advantage to our client was that Regent University would then be unable to interfere with the rebranding exercise until EUIPO made a decision on the validity of its rights. After the evidence and submissions were filed by both parties, EUIPO decided that the registration on which Regent University relied was invalid due to the prior rights of our client.

Unsatisfied by this outcome, Regent University appealed the decision to EUIPO’s Board of Appeal, who again agreed with the arguments we’d put forward. Regent University proceeded to file a further appeal with the General Court of the European Union which resulted in a hearing before the Court in April 2017. Again, the Court agreed with the arguments which we’d put forward and, as a result, Regent University’s rights were revoked. This means there is no basis to the Court action brought by Regent University, which will now be struck out, with costs being awarded in our client’s favour.

Outcome:

Despite a number of offers made to settle the matter on the basis of a co-existence agreement, Regent University seemed intent on enforcing what it saw as its rights. As a result, it not only lost the litigation and incurred substantial costs, but also lost its trade mark rights in the EU.

We successfully cancelled the registration on which Regent University was relying and stopped subsequent applications that were filed as it went through to registration — all whilst protecting our client’s new brand identity.

For more information please contact Alan Fiddes amf@udl.co.uk.

0113 245 2388

Contact Form

Website by Extreme