Oxford University Gets Opposition To Its Attempt To Trademark 'Oxford' For All The Things

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.

Filed Under: eu, geographic marks, oxford, trademark, uk
Companies: oxford university, oxford university press

EU General Court Refuses To Allow St. Andrews Links To Trademark 'St. Andrews' For All The Things

from the fore! dept

For those of us who have fallen in love with the world's most personally infuriating sport, golf, the name The St. Andrews Links Golf Course is of course quite notable. The famed "Cathedral of Golf" also happens to be located in a town of the same name, St. Andrews in Scotland. St. Andrews is a fairly common term in the naming of locations and famous landmarks. Despite this, The Saint Andrews Links went to the EU's Intellectual Property Office to request it be granted a trademark for "St. Andrews" in roughly every category, including broadly in apparel and sports goods. When that request was denied in 2016 on grounds that location names have high bars to clear to get trademarks and are therefore relatively rarely granted, St. Andrews Links took its case to Luxembourg on appeal.

There, the EU General Court dismissed the appeal, arguing again that "St. Andrews" is primarily a reference to the town of St. Andrews, not to any provider of the type of goods that St. Andrews Links wanted to hold trademarks for.

But having had its application to the European Union Intellectual Property Office (EUIPO) turned down in 2016, an appeal against the decision has now been dismissed by the EU General Court in Luxembourg.  According to official documents, the appeal board argued “the expression ‘St Andrews’ referred above all to a town known for its golf courses though not particularly for the manufacturing or marketing of clothing, footwear, headgear, games and playthings.”

The court said EU and UK law generally excludes the registration of geographical names as trade marks “where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned.”

In other words, the town itself is also well known and, because the mark applied for consisted of the name of that famous town, St. Andrews Links can't lock up "St. Andrews" for itself in a bunch of categories not directly related to its business. Readers here will likely be nodding along, understanding that this all makes perfect sense. The reason I'm highlighting all of this is because of how frustratingly rare it is for an intellectual property office and appeals court to get this so, so right. Too often, corporate wishes are simply granted, especially when dealing with an entity like St. Andrews Links, which is itself rather famous and is a point of pride for the region.

It sure would be nice if other IPOs applied the intent of the law this strictly.

Filed Under: geographic marks, golf, scotland, st. andrews, trademark
Companies: st. andrews links

Small Irish Craft Beer Joint Has Actually Original Trademark Opposed By Holder Of A Purely Geographic Mark

from the mark-it-place dept

It seems like not a week can go by without some silly trademark dispute in the alcohol industries. This latest example comes to us from Ireland and provides a vivid demonstration for why trademarks ought to only be granted on unique and original names and not, say, on a mark based on common geography.

Leo Mansfield of the Connemara region of Ireland opened a storefront business and called it "Conn O'Mara" after the titular fictional character he created as something of a mascot for the store. He registered the name "Conn O'Mara" as a trademark in 2009, as well as the logo for the Conn O'Mara character he created. All of this is perfectly original stuff, a fun and fictionalized nod to the Irish region where the storefront is located. In 2015, however, Mansfield decided to release a line of craft beer through the store as well and filed for a trademark on the name and logo to be used on his brews. Beam Suntory, headquartered in Chicago with two distilleries in Ireland, filed a notice of opposition to Mansfield's trademark, claiming that it has a registered mark for "Connemara" for the liquor marketplace.

Cooley Distillery claimed that products under the ‘Conn O’Mara’ mark could be confused with its own Connemara Irish whiskey products.

“I am appalled by the idea that Cooley Distillery would attempt to trademark ‘Connemara’,” Mansfield said in his counter statement seen by The Spirits Business. “Connemara is the world renowned geographical area of outstanding natural beauty in which I live and do business. If Cooley Distillery’s intent is to stifle local commercial activity and deny the use of the geographical name of the area to goods and services from the area, then I am outraged.”

And with good reason. Mansfield's trademark is original, a fictional character and name that playfully serves as an homage to the region. Beam Suntory's mark, however, is the name of the region. Even putting aside my personal crusade to get the trademark offices of the world to recognize that the beer, wine, and liquor marketplaces are distinct enough to deserve their own trademarks, allowing a major industry to lock up a trademark for a name that is a geographic area is just plain silly. It's not original, it's not distinctive, and it treads on all of the other existing and potential businesses within that geographic area.

It seems some of the locals in Connemara are on Mansfield's side.

Mansfield told The Spirits Business he decided to “go public” with his point of view now because he was “fed up” with the lengthy process. He added that local bars have decided to get behind him “and will be contacting the reps”.

Now, Beam Suntory is a huge company, but it still can't be worth the PR hit and the local patronage of these Connemara businesses to fight a storefront shop with a unique name and fictional character.

Filed Under: beer, conn o'mara, connemara, geographic indicators, geographic marks, trademark
Companies: conn o'mara, cooley distillery