The city of Cambridge is renowned around the world. It is home to one of the oldest and most prestigious universities; it is the place where the laws of association football were first developed; and more recently it has become the beating heart of the high-tech sector in the UK, being known as Silicon Fen.
But using the city name is becoming an increasing challenge for local organisations, with the university making challenges to those using it in their branding.
In the latest case, a small company called Cambridge NeuroTech has spent £30,000 fighting a trade mark challenge by the university, which wanted to prevent the company using the word ‘Cambridge’ in its name.
Registering a trade mark is one of the ways of protecting intellectual property and can be used to protect a brand, such as the name of a product or service.
Once registered, a trade mark owner can use the ® symbol and take legal action against anyone using their brand without permission. They can also sell and license their brand to others.
To register a place name, anyone applying for a trade mark would need to show it means more than the place itself; it needs to show the name is aligned with the specific goods or services for which it has been registered, to demonstrate an ‘acquired distinctiveness’ .
The university applied for the trade mark saying the name ‘Cambridge’ was often used on its own to refer directly to the university, or its work, and arguing this gave the trade mark the necessary ‘acquired distinctiveness’ in the context of activity aligned with its own. But while some of the aligned activities registered by the university are obvious, such as university education services or teaching apparatus and instruments, others seem less so, such as stickers, bibles and satellite telephones.
The university argues it is protecting itself, not making any claim to the city name, saying in a statement: “We protect the Cambridge name where there’s a risk of confusion with the work of the university. This is to prevent people from being misled and to support our global mission in education, research and innovation. We do not claim to own the rights to Cambridge across all fields of activity and have never done so.”
Other companies challenged by the university include Cambridge Football Club, Cambridge Rowing, Cambridge Blue Lager, Cambridge Molecular, Cambridge Spark, and Cambridge Quantum Computing.
“Although Cambridge NeuroTech won its fight against the university, it came at a heavy cost and was only a partial victory as the Court directed that the company’s use of the name Cambridge could only be used for goods and not for services,” explained commercial / intellectual property law expert Jon Dunkley of Wollens solicitors.
“It is easy to see how small, local businesses in Cambridge may feel they are being strong-armed by the university, considering all the resources at the university’s disposal. Yes, it’s a place name with a strong association with the university, but it’s also a city where people live and it’s understandable they may wish to highlight they are locals when it comes to their business name.”
They added: “While this may seem an unusual and unique case, it is still a reminder of the need to ensure all intellectual property matters are reviewed early on when building a business. It’s costly and time consuming if you end up in court facing a challenge, and equally important are the resources used in establishing awareness with customers, if you find yourself forced to re-brand and start over. And don’t forget that it’s only the start once you have the registration approved, as it has to be renewed after 10 years.”
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