Oxford University tries to trademark the name ‘Oxford’ – expert opinion

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Here is an interesting case that has been featured in the mass media recently, where Oxford University has applied to trademark the word ‘Oxford’ as a pre-cautionary step in response to the ongoing uncertainty surrounding Brexit.

The MIA has reported on The intention for Post-Brexit EU Trademarks & Designs to be free of cost but as we point out in the linked article, there has been no more than a trickle of information in relation to the future of EU intellectual property rights in the UK. While the Government has sign-posted an intention to ensure EU rights holders are granted equivalent rights in the UK, there has been little further noise on the subject, in particular whether there will be an additional burden on rights holders, such as cost, to have these reciprocal rights in the UK.

The institution wants to secure exclusive rights to the use of the term Oxford on products such as stickers, pencils, DVD’s and even Bibles. Makers of maps, tickets newspapers and journals could be out of pocket if the application is approved and would have to pay to use the name. If approved, Oxford University Press can take legal action against any company which uses the ‘brand’ without permission – you can read the full article here

We spoke to the MIA’s intellectual property partner, Briffa, to find out how far trademarking can go and how likely the application is to be approved:

“When you register a word mark – such as the word OXFORD – your protection is limited to the goods and/or services which the mark becomes registered. When you apply for a trade mark, you have to choose from a list of “classes”, each of which deals with a certain type of good or service.

The applicant must also show that the proposed mark is not descriptive, and is sufficiently distinctive to be capable of being used as an “indicator of origin” of the goods/services for which the application is made. Once an examiner from the UK Intellectual Property Office is satisfied that this is the case, the application is published for an initial period of 2 months (3 for an EU mark) during which anyone with a competing interest can oppose the registration, i.e. make a case for why the mark should not be accepted for registration.

Oxford University Press (OUP) already own registered trade marks in the UK and the EU, covering goods such as printed materials and stationery, and publishing services. This shows that the distinctiveness test is satisfied (for the relevant classes) and so the mark is capable of being used as a “badge of origin”.

The Metro article appears to suggest that OUP are now making further applications, presumably in additional classes which are not yet covered by existing registrations. In this case, the marks will need to be considered distinctive for these new classes, and then withstand any oppositions from other organisations who may be using the word OXFORD (or any mark which is potentially confusingly similar) in the provision of similar goods and services – such as, potentially, Oxford Brookes University, or Oxford Mail.

In the event of an opposition, the UKIPO will look at prior or concurrent use of the mark, and determine whether there is a risk of consumer confusion. It may therefore, following opposition proceedings, decide that the mark cannot be registered. It is possible therefore that businesses who have previously lawfully used the word OXFORD in their branding may consider opposing any new application by OUP.

Even if the mark is successfully registered, it may still be vulnerable to cancellation proceedings. If a person or business is able to show that the mark should never have been registered in the first place, or they can show that the mark has not been used for a continuous period of five years from registration in the territory, they can apply to the relevant IPO and request the cancellation of the registration. Interestingly, the EU mark OXFORD – which includes all-important class 41 (education services) – is currently subject to cancellation proceedings.” – Joshua Schuermann, Solicitor – Briffa, Intellectual Property and Information Technology Lawyers

Don’t forget that MIA members benefit from a free thirty minute consultation and special rates on all intellectual property and general commercial matters

For further information contact info@briffa.com or go to www.briffa.com/