Oxford University was defeated in a recent application for invalidation of a UK registered trade mark, owned by a client of Forrester Ketley & Co.
The registered trade mark in question, OXFORD BLUE, had been used by its current Proprietor, H. S. Tank & Sons Ltd. and its predecessors in title, on a range of clothing since 1985.
The University of Oxford, acting through a subsidiary, tried to invalidate the registration on the ground that it owned an earlier unregistered right, by virtue of the common law of passing off, in the mark OXFORD BLUE.
The University argued that the term 'Oxford Blue' had been used since 1829 in recognition of sporting excellence, and that a considerable reputation and goodwill had been built up in the mark. The University claimed that an 'Oxford Blue' is an internationally-renowned award of sporting excellence, as it is awarded to sportsmen and women who compete for Oxford University in the annual varsity sports matches against Cambridge. Oxford University stated that to avoid tarnishing the reputation and goodwill surrounding the 'Oxford Blue' award, it had not been commercially exploited. It was also alleged that H. S. Tank & Sons Ltd. had misrepresented its goods as being associated with Oxford University.
In response, the chief executive of H. S. Tank & Sons Ltd. explained that the inspiration for the trade mark was a horse of that name which he saw competing at Badminton horse trials. He also stated that significant sales of garments under the brand OXFORD BLUE, of the order of two and a half million over a ten year period, had been made without any apparent confusion with the University taking place.
In his decision, the Trade Marks Registry Hearing Officer referred to the three classic conditions required to establish passing off, as set out by Geoffrey Hobbs QC in Wild Child [1998] 14 RPC, 455:
(a) that the plaintiff's goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;
(b) that there is a misrepresentation by the defendant (whether or not intentional) leading to or likely to lead the public to believe that goods and services offered by the defendant are goods and services of the plaintiff; and
(c) that the plaintiff has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.'
In his decision, the Hearing Officer stated that "goodwill has no life outside trade", and pointed out that "the 'Oxford Blue' award is not to be bought or sold in the marketplace".
As 'Oxford Blue' had not been commercially exploited by the University, it had no protectable goodwill, and thus the invalidation was rejected. To quote the Hearing Officer, "this case appears to [be] a classic example of reputation without goodwill". It is however worth noting that the Hearing Officer did not in fact consider the evidence filed by the University to prove the reputation of the term 'Oxford Blue' as he considered it unnecessary to do so in the light of his finding on goodwill.