A lesson in trademark protection

Globalisation of education providers
As a result of an increased demand for top performing schools internationally, there has been a recent trend towards the globalisation of the educational sector. For example, a number of outstanding British and US schools and universities have set up campuses in new markets, particularly in China and the Middle East.

As part of these arrangements, establishments usually enter into licensing agreements with local partners, authorising the use of the school’s intellectual property rights, including the name and logo of the school, together with the curriculum, teaching materials and the school uniform. Some of these assets can be protected through IP rights, such as trademarks, copyright and registered design rights.

Given that the right to use the name and logo of a school will be core to any licensing deal, it is key to ensure that adequate trademark protection is secured in advance of entering into licensing agreements. As part of this protection strategy, it is important to consider whether local language variations, such as Arabic or Mandarin versions of the trademark, need to be protected.

Why secure trademark protection?
Registering a trademark gives the owner the exclusive right to that trademark, in relation to the goods and services listed on the certificate, in the country of registration.

Accordingly, a trademark registration can prevent competing schools, nurseries or universities from using the same or a similar trademark.
By way of example, if a nursery has established an outstanding reputation, a third party setting up a new nursery may seek to use a trademark which is the same or very similar to the first nursery’s brand, in an attempt to confuse prospective parents and students into thinking that the new campus is associated with the first nursery. Trademark registrations can be used to prevent third parties from seeking to trade off the reputation of successful educational brands, without permission.

Trademark protection also enables establishments to develop their brands, by attracting investors or generating alternative revenue streams, through licensing arrangements in new markets.

Trademark searches
Before applying for and/or using a trademark, it is important to ensure that there are no conflicting prior brands being used or registered in the countries of interest.

Trademark clearance searches should be undertaken prior to the launch of a new brand and before expanding that brand into other markets. Conducting searches can quickly reveal whether the relevant trademark is free to use or whether use of the mark will infringe the prior rights of a third party.

Given that significant time and money is invested in branding exercises, undertaking clearance searches early can avoid unnecessary costs being incurred in connection with a forced re-brand.

The application process
Assuming the results of searches are clear, applications can be filed to protect the trademark in the countries of interest. Before filing the applications, it is necessary to decide which goods and services should be protected in relation to the trademark.

All goods and services are categorised into 45 ‘classes’. Educational establishments usually look to secure protection in the following core classes:

• Class 41 which covers education and training services; and
• Class 16 which covers teaching materials and books.

Universities and other higher educational establishments may also wish to protect their trademarks in relation to Class 42, which covers research and development services.

Any establishments which are considering opening campuses in new markets should secure protection for their trademarks before entering into discussions with potential local partners. Adopting this approach will ensure that they are in a position to license the use of the school’s trademark in that country.

If you have any questions about securing trademark protection, please contact our IP team at IP@clydeco.ae.