This article considers three trade mark stories that have recently been in the news. One involves a prestigious university, another a leading football club, and the third deals with Elon Musk's latest toy.
Pic credit: Wikimedia Commons
University of Cambridge
A recent trade mark dispute has shone a spotlight on the issue of how far a prestigious university might go to protect its IP.
A last-minute opposition
In 2017 an individual, Tahl Holtzman, applied to register CAMBRIDGE NEURO TECH as a trade mark. On the last day of the opposition term, 'five minutes to midnight' in the words of a BBC report, a notice of opposition was filed. It was filed not by a business rival, not by an IP busybody or chancer, but rather by the 'Chancellor, Masters and Scholars of the University of Cambridge'. A tad intimidating!
University names, geographical indications
The opposition generated considerable interest around the issue of how far a university can go to protect its name. As Holtzman said, 'it's quite bizarre for any entity to claim they own a geographical indication'. He went on to say this:
'I think it's particularly unhelpful – indeed harmful – in the Cambridge bubble for the university to stifle start-ups who quite rightly want to say ''we are located in Cambridge, therefore it's part of our trading name and trademark''.'
Trade mark registrations
Apparently, the university has trade mark registrations that incorporate CAMBRIDGE in several classes, including in relation to education and teaching apparatus.
A mismatch
There were the predictable David and Goliath claims - the university 'can outspend you and they don't care how long it takes'. The university has previously opposed the registration of trade mark applications for CAMBRIDGE FOOTBALL CLUB, CAMBRIDGE MOLECULAR and CAMBRIDGE ROWING.
Arrogant and delusional
There were claims that it was 'arrogant' and 'selfish' of the university to think that it could 'own a geographic location' and push a company into 'capitulating'. There was a reference to an earlier trade mark decision where the hearing officer said that the university 'clearly suffers from the delusion that it owns rights to the term Cambridge no matter what field of activity is involved'.
Other CAMBRIDGE incorporating trade marks
There was mention of the fact that there are other registrations for CAMBRIDGE incorporating trade marks that are not linked to the university, namely CAMBRIDGE NETWORK, CAMBRIDGE DISTILLERY and CAMBRIDGE WHITES (a dentistry practice).
The university's response
The university said that 'polling shows that the vast majority of the public associate the word Cambridge with the university, especially in education, innovation and related areas.' It went on to say that 'we protect the Cambridge name where there's a risk of confusion with the work of the university... we do not claim to own rights to Cambridge across all fields of activity and have never done so.'
The upshot
The United Kingdom Intellectual Property Office held that the university was entitled to stop the registration of the trade mark CAMBRIDGE for competing goods and services, however, the trade mark CAMBRIDGE NEURO TECH could be registered for goods dissimilar to those covered by the university's registrations.
An expensive business
According to Holtzman, the battle has cost his company some GBP30 000 and the end result is that he has been able to register the trade mark for certain goods but not for services.
Pic credit: PNG.ToolXoX.com
Manchester City
Pretty hot at football, but what about trade marks?
It's been reported that the UK company behind the clothing brand SUPERDRY has sued the Manchester City Football Club for infringing their trade mark, by having the words SUPER DRY ASAHI 0.0% appearing on the club's training kit – this followed Manchester City's recent announcement of a new partnership with Asahi for the 2023/4 season. According to a report, the company has called on Manchester City to clarify whether it uses or intends to use the sign on any class 25 goods beyond the sponsored kit. Awkward!
A recent update suggests that Manchester City has already modified its training kit by removing the words SUPER DRY, so it now simply features ASAHI 0.0%. A wise decision.
Pic credit: Wikimedia Commons
Elon Musk
Cybertruck
Tesla recently announced that it would start delivering its CYBERTRUCK vehicles to customers – apparently, there were some 250 000 pre-orders within days of the announcement.
For unknown reasons, the publication World Trademark Review decided to investigate what trade mark issues Tesla might face with this trade mark. The answer seems to be quite a few, with there being decidedly problematic trade mark registrations in Australia, Brazil and the UK, including questions surrounding the distinctiveness of the trade mark.
As for the distinctiveness of the vehicle itself, no problems there. Comments range from it being 'stylistically breathtaking' to a low polygon joke that only exists in the fever dreams of Tesla fans that stands high on the smell of Elon Musk's flatulences'.
Clearly, a product you'll either love or hate!
Reviewed by Gaelyn Scott, Head of ENS' IP Practice.
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