St Andrews University entitled to bring trade mark infringement action against student gown seller in Scotland



Lord Doherty
Lord Doherty

Scotland’s oldest university will be able to pursue legal action in this jurisdiction against a company it has accused of infringing its trade marks in the sale of student gowns after a Court of Session judge rejected arguments by the London-based retailer that the case should be heard in England.

The University Court of the University of St Andrews raised intellectual property proceedings seeking interdict against Student Gowns Ltd infringing its trade marks and from passing off its gowns as those of the university.

The defender lodged pleas of jurisdiction and “forum non conveniens”, but Lord Doherty ruled that Scotland was the “more appropriate forum” for the dispute.

‘Passing off’

The pursuer avers that at about the beginning of the 2018 academic year the defender began marketing for sale a purported version of a St Andrews undergraduate gown which it stated was made to university specifications; that it marketed the gown on its website and on Google and Amazon; and that in doing so it used the protected signs. 

It also avers that in September 2018 employees of the defender came to St Andrews where it marketed and sold the defender’s gowns to students representing that they were made to university specifications, which has caused “confusion” among undergraduate students. 

The pursuer maintains that the defender has infringed its UK trade mark for the signs “University of St Andrews”, “St Andrews University”, or “The University of St Andrews” in relation to the sale by the defender of gowns to the pursuer’s students, and that it was “passing off” its goods as those of or authorised by the pursuer. 

It further avers that the defender’s gowns are of “inferior quality” to the gowns authorised by the pursuer, that they are made from more lightweight fabric, and that the bobbling effect of the nap cloth is less pronounced than on the gowns authorised by the pursuer.

The pursuer’s position is that the defender’s infringements of the trade mark have damaged the mark and the reputation of the mark; and that it is reasonably apprehensive that the defender will continue to infringe the trade mark and will continue to pass off its goods as those of or authorised by the pursuer unless restrained from doing so. 

It also avers that at the beginning of the 2018 academic year 200 fewer gowns than normal were sold by its subsidiary and that a significant proportion of the reduction in sales is attributable to students buying gowns from the defender.

The action relates to “wrongful acts” in Scotland and marketing aimed and directed towards customers in Scotland, in particular the students attending and about to attend the University of St Andrews.

The court was told that around 31% of the University’s undergraduate students are from Scotland; that most undergraduates do not buy their gowns until they have arrived in St Andrews; that of the official gowns sold in 2018, around 22% were pre-ordered; and that the fact that some potential customers for gowns are outside Scotland does not detract from the fact that the defender’s activities are directed to a material extent towards customers in Scotland. 

The pursuer founded upon the “special jurisdiction” in rule 3(c) of schedule 4 to the Civil Jurisdiction and Judgments Act 1982, arguing that the pursuer had the option to sue in the place of the defender’s domicile or the place where the damage occurred, and that Scotland was “the place where the harmful event occurred or may occur”.

‘No jurisdiction’

The defender denied infringement of trade mark and passing off, and claimed that the relevant pages of its website were “not specifically marketed, aimed or directed at customers in Scotland”.

The defender avers that it has sold a total of 89 of the gowns, 59 of which were sold in St Andrews on 9 and 10 September 2018; that, of the remaining 30, 14 were sold via the website to customers with addresses outside Scotland.

It avers that St Andrews undergraduate gowns tend to be purchased by students after their place has been confirmed, but before they commence their studies, adding that a minority of undergraduates are from Scotland and that the majority are from elsewhere in the UK or overseas.

It further avers that the place where the alleged harmful events have occurred was England and that the Court of Session was “neither the natural nor the appropriate forum” for resolution of the dispute.

The defender’s primary position was that the Court of Session had “no jurisdiction” to try those parts of the claim that relate to the defender’s online use of the signs said to be protected by the pursuer’s trade mark. 

It was submitted that if the Scottish court had jurisdiction it ought to decline to exercise it on the ground of forum non conveniens

England and Wales was another forum of competent jurisdiction - the defender was domiciled there - and that forum was “clearly and distinctly more appropriate” for trying the dispute having regard to the “interests of the parties and the ends of justice”.

In the whole circumstances it was argued that the court should conclude that England and Wales was the jurisdiction with which the dispute had the “more real and substantial connection”.

‘More appropriate forum’

However, the judge ruled that the defender’s plea of no jurisdiction was “not well founded” and that Scotland was the “more appropriate forum”.

In a written opinion, Lord Doherty said: “The pursuer founds on the special jurisdiction in rule 3(c). In that regard it is well established that a pursuer has the option of founding upon either the place of the damage or the place of the event giving rise to the damage.

“I deal first with the passing off claim. The pursuer founds upon the place of the damage being Scotland. In my view it is entitled to do so. The place of the damage is the place where the goodwill concerned subsists and where it is protected by the law. The goodwill which the pursuer claims is being injured by passing off subsists in Scotland and it is protected by the Scots common law relating to passing off.

“I turn to infringement of the trade mark. The place of the damage is the place where the trade mark is registered. Since the trade mark is registered in the United Kingdom, each of the United Kingdom jurisdictions is a place of the damage. Accordingly, the pursuer is entitled to found jurisdiction upon Scotland as it is a place of the damage.”

He added: “In my opinion the subject matter of the action has a very real and substantial connection with Scotland. The pursuer is a Scottish university which complains that its trade mark has been infringed, and that its goodwill is being damaged by the defender passing off goods as being authorised by the pursuer. 

“While the defender does not have a place of business in Scotland, I consider that on a proper analysis the defender has carried on and continues to carry on business here. Some of the relevant acts of the defender took place in St Andrews. 

“While the online advertising was instigated and managed from the defender’s place of business in London, and that is a relevant connection with England, it was and is directed to a very material extent to undergraduates who would be in Scotland when they read the advertising and when they purchased a gown. 

“Any damage to the pursuer’s goodwill caused by passing off will have been/will be suffered in Scotland. Similarly, damage caused by the alleged trade mark infringement will have been/will be suffered very largely in Scotland.”

© Scottish Legal News Ltd 2020



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