S. 11(3) of the Trade Marks Act 1994 provides the following defence:

A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality. For this purpose an “earlier right” means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of: (a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or (b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).

On the facts, the defence failed. The court held that a trade mark proprietor would defeat the defence if it was able to show that it had goodwill which extended to the locality of the defendant. The parties in question were providing letting services for University students, the claimant in Leicester and the defendant in Essex. By the nature of these services, the students would originate from around the country and would not be limited to the respective localities of the parties providing the services.

The court reasoned:

The claimant's goodwill would extend to Leicester students when they are at home, or when they have left university, as well as to their parents or others who have been involved in their choice of accommodation (perhaps as a guarantor), any of whom seeing the name SULETS used in relation to student accommodation services at another university, perhaps when applying for accommodation for a post-graduate course, or helping another person apply for accommodation, would be likely to associate the name with the claimant.

Case details at a glance

Jurisdiction: England & Wales
Decision level: Intellectual Property Enterprise Court (IPEC)
Parties: STUDENT UNION LETTINGS LIMITED (claimant) and ESSEX STUDENT LETS LIMITED (defendant)
Citation: [2018] EWHC 419 (IPEC)
Date: 07 March 2018
Link to bailli decision: http://dycip.com/sulets