Trade mark decision

BL Number
O/060/98
Decision date
18 March 1998
Hearing Officer
Mr M Tuck
Mark
THE AMERICAN UNIVERSITY IN LONDON (AU)
Classes
41
Applicant
Dr Khurshid Admad Khan
Opponent
The American College in London Limited
Opposition
Sections 3(3)(b), 3(4) & 5(4)(a)

Result

Section 3(3)(b) - Opposition successful.

Section 3(4) - Opposition successful.

Section 5(4)(a) - Opposition successful.

Points Of Interest

  • None.

Summary

The opponents opposition was based on their ownership and use of the mark THE AMERICAN COLLEGE IN LONDON since the year 1978; some fourteen years before the filing date of this application. The opponents also filed evidence to show that the applicant was not entitled to use a trading name incorporating the word UNIVERSITY since it had been refused accreditation. Papers relating to a prosecution by the Trading Standards Officer of Islington Council were provided together with the dismissal of an appeal against conviction.

Under Section 5(4)(a) - Passing Off - the Hearing Officer noted the opponents use and reputation and concluded that, as the respective marks were very similar, the opponents were successful on this ground of their opposition.

As the applicant was not entitled to use the word UNIVERSITY because use of that word is controlled by The Business Names Act, and its application for accreditation had been refused, the Hearing Officer determined that the applicant's application fell foul of Sections 3(3)(b) and (4) of the Act because use of the mark would lead to deception of the public and because use of the mark in relation to the services claimed was prohibited.

Full decision O/060/98 PDF document18Kb