International reputation is increasingly important to schools, both to attract pupils from overseas and to take advantage of the greater opportunities for licensing overseas schools.
However, an international reputation also creates a risk that others will seek to abuse a school’s brand either for
their own financial gain or for other malicious reasons. This can take many forms: an abusive website; material
placed on an internet message board; the use of a crest on poor quality uniforms; or even use of an identical or
similar name by an unconnected school.
This article addresses the following issues:
• the protection of a school's name and crest – its trademarks – from misuse; and
• the licensing of a school's trademarks to overseas schools.
Protecting your reputation
A school's name and crest can be highly valuable charitable assets, and the governing body is required to
do all that is reasonable to protect them. Like other types of trademarks, they are best protected
by registration. Registration makes it far easier to combat misuse, particularly on the internet and outside the
school's locality.
Without registration, there may be nothing even a long-established school can do to stop a new school or,
say, a language college being established overseas under the same name. The benefits for the infringers are obvious – immediate credibility without the inconvenience of having to generate a good name through centuries of
educational excellence. The dangers for the school are substantial – the dilution of a respected name and the
possibility of being unfairly linked to a scandal in an unconnected institution.
Schools are advised to protect their names by registration in countries from where they attract or wish to
attract students. Registrations are essential in jurisdictions in which a school is considering licensing its name. In
most jurisdictions, registrations only have to be renewed every ten years and, if renewed, will last forever.
A single registration can protect a school's trademarks across all 27 countries of the European Union. There is
also an international trademark application system which simplifies the process for achieving protection outside the
European Union.
Licensing an overseas school
It is increasingly popular for a UK school to enter into an arrangement whereby an overseas school uses the UK
school's name, often in return for royalties.
Benefits of licensing
There are many potential benefits, including:
• revenue;
• cultural and sporting links;
• exchanges of pupils and staff;
• the development of education in underprivileged regions; and
• enhancing the UK school's reputation.
Risks of licensing
There are also risks:
• a drain on management time;
• a scandal in the overseas school that damages the reputation of the UK school; and
• a divergence in ethos or academic performance that damages the reputation of the UK school.
These risks are interlinked. If too little time is spent managing the relationship with the licensed school, the
risk of something going wrong at the other school will tend to increase.
Minimising risks/maximising benefits
It is critical that all parties are clear from the outset what the aim of the project is. Some have an aim that is entirely
philanthropic; others are more interested in revenue generation. Unless the criteria are clear, there is scope for
dissatisfaction.
Who are you dealing with? Do you know and trust the people behind the licensed school? Do they share the
school's ethos? It is vital that you check their credentials if they are not well known to your school.
Protect the school's name. In the following order, a school should:
• register domain names in the relevant country (eg with the ending ".cn" for China);
• file trademark applications in the relevant country; and
• only then open negotiations.
It is important to note that:
• if you file trademark applications before registering domain names, someone might take your domain name before you have a chance to register it. Domain name grabbers scan trademark records for this purpose; and
• if you open negotiations before filing trademark applications, a dishonest potential licensee might use the school's name anyway if negotiations break down. Allow plenty of time to negotiate a detailed written agreement. Consider addressing the following points in the agreement:
• who will choose the licensed school's head and management team? Who will control their removal and the appointment of replacements?
• what exactly will the licensed school be called?
• what involvement will the UK school have in the start-up process, and will it be reimbursed?
• what licence fees will be paid?
• if revenue is an important aim, the agreement could provide for minimum annual royalties to incentivise the growth of the licensed school;
• what level of insurance will the licensed school be obliged to maintain?
• what is the licensed school's approach to religion?
• what is the licensed school's approach to corporal punishment?
• will the licensed school be obliged to offer places to underprivileged students? How will this be controlled?
• will the UK school be able to license other schools in the same country or region?
• how will the UK school control the content of the licensed school's website, prospectus and other
promotional material?
• will the licensed school use the UK school's uniforms and sports kits?
• on what grounds will the UK school be able to terminate the agreement, and what will be the arrangements on termination?
• the agreement should set out practical and measurable requirements aimed at replicating the ethos of the UK school in the licensed school. This is a difficult task.
Identifying relevant practical requirements needs a clear-headed assessment of the UK school's ethos and
the practical embodiments of it. We might all know that a school is friendly or academically rigorous, but what
has caused that to be the case?
Other considerations
Perhaps the physical layout of your school is important. The agreement may require that the licensed school
should have a friendly and collegiate atmosphere. But it may be just as important to state that the dimensions and
layout of the UK school's dining hall must be replicated in the licensed school to engender the UK school's friendly
dining atmosphere.
Being this specific in the agreement has advantages for the licensed school as well as for the UK school.
A successful licensed school will be keen to take all reasonable measures to generate the ethos of the UK
school, not just to take its name. Before signing the negotiated contract, consider whether it reflects your original aims. If it does not, do not feel compelled to sign. Sometimes, large projects like this gather their own momentum and the protagonists feel unable to call a halt even if they have growing doubts. It can be easier to stop a project if it is not public, so sign a confidentiality agreement with the potential licensee at the outset to keep the negotiations confidential.
By careful consideration of these issues, with advice where necessary, an independent school may provide
itself with greater opportunities to both protect and exploit its brand and reputation. Indeed, many schools that have protected their names and crests by registration have seen their international reputations flourish and prosper to the benefit of pupils at home and overseas.
