Disturbing the Universe

David L Clements, science and science fiction

Royal Institution: The Full File

1 Comment

For those interested in perusing the full file on the RI’s trademarking of Christmas Lectures, this has now been made available via Scribd. Most of the details are summarised in my previous post, but those of a legal background or disposition might find this of interest.

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Author: davecl

Astronomy, science, science fiction

One thought on “Royal Institution: The Full File

  1. As the lawyer friend of Dave’s who obtained the UKIPO file I thought I’d set out a guide to the documents within it:

    P1-5: The RI’s application for the ‘Christmas Lectures’ trade mark.

    P6-7: The UK Intellectual Property Office’s internal record of the application.

    P8: A UKIPO note that seems to show no existing trade marks that match the application; this will be the first check that UKIPO carries out, to ensure that there are no duplicates (at least, for the same class of goods or services) or near-matches.

    P9: UKIPO file note recording that the initial reaction is to reject the trade mark as being too descriptive. (The hand-written annotation is some time later and relates to the RI’s subsequent filing of further evidence.)

    P10-12: UKIPO writes to Olswang (the RI’s IP lawyers) setting out their decision to reject the application but noting that the RI can apply for this to be reconsidered.

    P13-17: Olswang asks for more time to prepare and file evidence; the UKIPO allows this.

    P18-34: Witness statement of Dr Gail Cardew, Director of Science and Education at the RI, setting out the RI’s reasons why it believes that the term ‘Christmas Lectures’ has become strongly associated with the RI. (The exhibits referred to were not included in the file.)

    P35-42: Legal submission by Olswang (apparently prepared by Kathrin Vowinckel; it is normal for letters from solicitors to be signed in the name of the firm) setting out the argument on behalf of the RI that ‘Christmas Lecture’ is so strongly associated with the RI as to justify it being made a trade mark even though it would normally fall foul of the rule against overly-descriptive trade marks.

    P42-67: This appears to be a selection of web pages found by the UKIPO via a search for ‘Christmas Lecture’, many of which refer to Christmas Lectures organised other than by the RI.

    P68: UKIPO file note discussing the evidence. On 15th December 2011 the UKIPO case officer decides that the RI’s application should still be rejected, and the letter described below is sent. Later (15th February 2012) there are notes agreeing that there should be a hearing of the RI’s case.

    P69-74: UKIPO writes to Olswang setting out in detail its reasons for considering that the RI has not proven that the term ‘Christmas Lecture’ is distinctive to it via long usage. The letter refers to the evidence set out at p42-67.

    P75: Olswang writes to UKIPO in response requesting a hearing before a senior trade marks officer. (The following day the further comments on the note on p68 are made.)

    P76: UKIPO’s hearings clerk writes to Olswang about arranging a hearing.

    P77-80: It evidently took some time to arrange the hearing but eventually it is set down to take place by telephone conference on 13th November 2012.

    P81-83: The record of the hearing before STMO Carol Bennett, at which she accepted the RI’s case of acquired distinctiveness and held that the trade mark should be granted, although only for lectures relating to science.

    P84: Letter from Olswang on behalf of RI accepting the limitation to the trade mark.

    P86-87: UKIPO confirms that the trade mark application will proceed and sets out the full specification of the trade mark in the four Nice classes for which the RI has applied.

    In short, the UKIPO eventually – after a lot of pushing from the RI – accepted the RI’s argument that it had built up such a strong association in the public mind between it and the term ‘Christmas Lecture’ that it was entitled to seek a trade mark protecting that term, even though the normal rule is that a purely descriptive term cannot be registered as a trade mark.

    As I’ve noted in my comments to Dave, the RI went to a lot of effort to get this trade mark in the face of repeated rejection from the RI, providing further evidence, a detailed legal argument and eventually even public survey data before taking the matter to an oral hearing.

    Simon Bradshaw

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