I’m pulling a comment from the previous post up to full post status here, as my friend, SImon, has posted his personal view of the legal side of this affair. The bottom line is that it is much better to get this trademark annulled now, than to wait on the RIs good graces until they decide to sue someone. That is better meaning cheaper, easier, faster and more final.
I think this addresses the points of Mike and Omar, among others, that it is best to let sleeping RIs lie, but further discussion is of course welcome.
I’m the lawyer who Dave has been referring to. As I’m not formally instructed in this matter, I’ll emphasise that what I’m about to set out are my personal views (albeit informed by training and experience) and not legal advice.
Although the RI seems to have refined its position somewhat it still seems clear to me that it is asserting its right to its trade mark. The RI’s recent position statementdescribes how it has developed a process for allowing other people to use its trade mark. That process involves completion of a questionnaire which is submitted for approval by the RI. Now, if you offer a process to grant someone permission to do an act you have the power to control, you are certainly not indicating that you won’t exercise that power. Quite the opposite, in fact: you are asserting your right to do so, because otherwise the whole approval and permission process would be pointless. Any IP lawyer or judge would look at the RI’s process and recognise it for what it is: a process for granting licences to use the RI’s trade mark. It is in no way a waiver of the right to enforce the trade mark itself.
If I go to a bit of common land with a path across it any put up a fence, then people who use the path are likely to complain. If I put a gate in the fence and say that I am in principle willing to give a key to people who ask in advance provided that they fill in a form saying why they want to walk across the common, that’s unlikely to assuage the concerns of the people who want to do so.
It is certainly true that any attempt by the RI to enforce its trade mark against someone using the term ‘Christmas Lecture’ in relation to a lecture given at Christmas would run into s.11(2)(b) Trade Mark Act 1994. A purely descriptive use of a trade mark does not infringe it, as TV production company AETN found out recently when it tried to enforce its trade mark ‘The History Channel’ against Discovery History (see A & E Television Networks v Discovery Communications Europe  EWHC 109 (Ch) at paragraphs 21 to 31.
But, just because there is a good arguable defence does not mean that there is not a problem. You will only find out if the defence actually works when if the RI decides to sue you for trade mark infringement. That may be an expensive exercise; even if you are fairly confident of winning, it is by no means common to get all of your costs back from the other side. Also, being sued is a very unpleasant and stressful experience. Do we really want to reassure science communicators by saying “it’s OK, if you do get sued you’ve got a good chance of winning and you won’t be too far out of pocket”?
If ‘Christmas Lecture’ is indeed so descriptive a term that use of it is unlikely to infringe the RI’s trade mark then there is a good argument that the trade mark should itself not have been registered on the basis that it is too descriptive under s.3(1)(c) TMA 1994. It appears that the RI relied upon the exception under s.3(1) for trade marks that have already acquired a ‘distinctive character’ as a result of their use. And, as other bloggers have pointed out, there are numerous documented uses of ‘Christmas Lecture’ going back years or decades.
I question the wisdom of accepting that the RI should act as self-appointed and self-regulating gatekeeper on whether uses of ‘Christmas Lecture’ will be authorised. If this isn’t acceptable, and if the RI maintains its position, then perhaps consideration should be given to asking the Comptroller-General of Patents, Designs and Trade Marks to reviewing the validity of ‘Christmas Lecture’ as a trade mark.