from the before-the-cart dept
Fresh off our post discussing the EU refusing the famous St. Andrews Links golf course a trademark for “St. Andrews” due to that term being primarily a geographical location, we have a similar situation in Europe centering around Oxford University’s attempt to trademark “Oxford” for a whole swath of categories. And, just to make what might seem like a banal trademark opposition a little more spicy, much of this has to do with Brexit.
The university wants to trademark the city’s name on more than a hundred products from stickers and pencils to DVDs and bibles.
However the move has sparked concern that if granted, makers of maps, tickets, newspapers, journals and 122 other goods could potentially face a bill for using the word ‘Oxford’ in the wrong way.
The application to the Intellectual Property Office has so far garnered three objections.
And that number is likely to grow, with several objectors thus far essentially running to the press in a call to arms for anyone who could be targeted by the university if this application is granted. All of the objections make the same argument: Oxford was a city before it was a university and locking down the name of a city for broad categories such as those requested in the application is a big no-no in the EU. Just like in the case of St. Andrews, this makes sense. If the application is granted, it could be used as a weapon by Oxford University to keep any shopkeeper in Oxford from selling stickers with the word “Oxford” on them. That obviously isn’t the point of trademark law.
Interestingly, however, the school already has a trademark in the EU. It probably never should have been granted one. This trademark application is for the UK, as the school attempts to get its business in order in anticipation of Brexit.
Oxford University Press (OUP), a division of the university, lodged the application in October as the world-renowned institution looks to sure up protection of its ‘brand’ ahead of Brexit.
The university currently has a trademark in the EU, however, if the UK withdraws, as is currently planned in March, a new trademark would have to be sought for the UK.
It would be nice if the UK IPO could handle this better than the EU, actually, and recognize the problems of granting a trademark for a school that itself is named after the town in which it resides.
For its part, Oxford University is making a lot of noise about its promise not to keep people from using the term “Oxford” and to only go after other entities that are “infringing on its rights.” That’s the whole rub, of course, in that after the trademark is granted, legal teams far too often err on the side of protectionism, including in cases where protectionism isn’t warranted.
The EU got this one right with St. Andrews. Hopefully the UK gets it right as well.