This article first appeared on WTR Daily, part of World Trademark Review, in (April/2017). For further information, please go to www.worldtrademarkreview.com

In a March 28 2017 decision (Regent University v EUIPO, Case T-538/15), the General Court confirmed the likelihood of confusion between the word mark REGENT UNIVERSITY and the figurative mark REGENT’S COLLEGE LONDON for identical services in Class 41.

On November 10 2005 Regent University filed an application for the word mark REGENT UNIVERSITY in Class 41 for “educational services and the like”. The mark was registered on October 24 2006.

In 2013 Regent’s College filed an application for a declaration of invalidity against the mark on the basis of its prior UK figurative mark REGENT’S COLLEGE LONDON registered in Class 41 for “College education, teaching and training services; arranging and conducting conferences, meetings and seminars” in Class 41.

The earlier mark consists of a round shape containing the wording REGENT’S COLLEGE LONDON, along with the drawing of a book and a lamp, and was registered with the following disclaimer: “Registration of this mark shall give no right to the exclusive use of the device of a book and the words ‘College London’”.

In 2014 the EU Intellectual Property Office (EUIPO) Cancellation Division confirmed the likelihood of
confusion between the signs, and declared the registration of the contested mark invalid.

Further to the appeal filed by Regent University, on July 6 2015 the EUIPO Second Board of Appeal
dismissed the appeal, confirming the likelihood of confusion due to:

• the high degree of similarity of the involved signs from a visual, phonetic and conceptual point of view (considering a normal degree of distinctiveness of the earlier UK mark); and
• the identity of the services claimed in Class 41.

In its action before the General Court, the applicant claimed that the appeal board had made errors in its assessment when comparing the signs at issue and in the global assessment of the likelihood of confusion.

According to the applicant’s opinion, the appeal board wrongly considered the overall impression of the signs to be similar, without considering the differences in the wording: ‘university’ (in the applicant’s mark) versus ‘college’ and ‘regent’s’ in the earlier mark.

The applicant claimed that the appeal board failed to take into account the meaning and importance of the wording, in particular the words ‘university’ and ‘college’, which qualify the word ‘regent’ in the signs.
In affirming that the words ‘university’ and ‘college’ would “be associated with an institution where
educational services will be provided, normally on a third level basis”, in the applicant’s opinion the appeal board failed to consider the evidence produced before showing that the relevant public would regard bothterms as highly significant.

In addition, the appeal board considered Regent’s College to be a college named in honour of the prince regent, later King George IV while, according to the applicant’s opinion, the evidence provided demonstrated that the word ‘regent’s’ in the earlier mark referred to the location of the Regent’s College campus (located in the Inner Circle of Regent’s Park, London).
In any case, in the applicant’s view London is a geographical location and is a crucial word that cannot be disregarded by the appeal board in its overall assessment of the similarity of the marks.
Despite the applicant’s arguments, the court confirmed that the appeal board had correctly considered the marks as a whole in assessing that the signs at issue were “similar overall”.

The appeal board correctly began its analysis of the marks from the distinctive and dominant elements of the signs – namely, the element ‘regent’s’ in the earlier trademark and ‘regent’ in the challenged application.
The relevance of the word ‘regent’s’ in the earlier mark was also confirmed by the smaller dimension of the word ‘London’ and the descriptiveness of the word ‘college’. Further, in the contested application the word ‘university’ was perceived as a mere description of the services covered by that mark.

From a conceptual point of view, the appeal board had correctly concluded that the dominant element, ‘regent’, could be understood “either in a general sense, namely a person who rules or governs in the stead of another, whether a minor or legally incapacitated, or as a reference to the Prince Regent and future King George IV who, before acceding to the throne of the United Kingdom, ruled as regent during the illness of his father, King George III”.

In conclusion, the General Court confirmed that the signs at issue were similar, rejected the applicant’s arguments and dismissed the action in its entirety.