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Trade Mark infringement by agent

A subsidiary of the University Essex’s Student Union was found to have infringed a Leicester lettings agents UK registered trade mark in the case of Student Union Lettings and Essex Student Lets.

The claimant was a letting agent mainly providing accommodation for students in Leicester. In 2015 they registered SULETS as a trade mark for their services. The Defendant also provided accommodation for the students of the University of Essex. In 2014 they rebranded as SU LETS.

The letting agent issued proceedings against the subsidiary for a trade mark infringement of SU LETS. The subsidiary argued that it had goodwill in the SU LETS name in the local area at the time that SULETS was registered.

The court held that the test for trade mark infringement had 6 elements:

  1. there had to be use of a sign by a third party;
  2. the use had to be in the course of trade;
  3. it had to be without the consent of the trade mark proprietor;
  4. it had to be a sign which was identical to the trade mark;
  5. it had to be in relation to goods or services which were identical to those for which the trade mark was registered;
  6. it had to affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.

All the requirements were met. The parties’ marks were identical, and the subsidiary infringed the trade mark SULETS when they used SU LETS. Furthermore, the use of SU LETS by the subsidiary created a risk that the public might believe that respective services were provided by the same or linked companies which could cause confusion. Actual confusion did not need to be proved.

The Subsidiary’s defence that it had goodwill in the SU Lets name in the local area prior to the SULETS registration was dismissed. The defence was available to them only if they used SU LETS in a particular locality prior to the registration. To defeat the defence the agent had to show that they too traded in that locality or that it had goodwill in that location. The court found that the agent’s goodwill was not just limited to Leicester, they also had customers from outside Leicester. Its goodwill in SULETS extended to Leicester students when they were at university, or away from university, as well as their parents as guarantors or others involved in obtaining accommodation, but all of whom on seeing the SULETS trade mark would associate it with the agent.

The agent’s claim of passing off and trade mark infringement therefore succeeded.

Comment

We have heard complaints of third parties using similar stationary to others and using similar names, so we hope the above 6 steps will be of some assistance. However, prior to making any allegations advice should be sought.

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