Disturbing the Universe

David L Clements, science and science fiction

Royal Institution: The Lawyer Speaks

2 Comments

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 [2013] 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.

Simon Bradshaw

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Author: davecl

Astronomy, science, science fiction

2 thoughts on “Royal Institution: The Lawyer Speaks

  1. I am sorry, but at no point have I said that we should “let sleeping RIs lie.” I have said repeatedly that we should push the RI to make it clear that they will not seek to enforce their trademark against any individual or educational establishment that chooses to refer to their Christmas lecture as a Christmas lecture. The advice I have received is that such a clear statement, replacing the ludicrous attempt to license and take credit through their intrusive questionnaire, would provide all the protection we would need to get on with our outreach lives without fear of being sued. It could well weaken the trademark to the point of uselessness, but, as your friend explains, it is probably that useless anyway due to its generic nature and the established record of non-RI Christmas lectures over many years.

    It would still potentially offer the RI some protection against what they claim is the real threat that they perceive, which is that they suspect a large multi-national company might be about to start a rival set of large-scale national Christmas science lectures very much analogous to theirs, although I suspect any decent multi-national has good enough lawyers to rip this nonsense trademark to shreds anyway (or they would just call it something different because, unlike the RI, they don’t care).

    This seems a far better solution than getting into any more formal legal process, since it gives the RI a graceful exit and an opportunity to rebuild some trust in the broader outreach community. I have no wish to set about humiliating them by trying to beat them through a legal revocation process, thus creating bad publicity for them and potentially for us too. I think that their idea of a Christmas science festival is an excellent one, and would be happy to support the RI in setting it up as soon as they stop pointing a gun at us, so would much prefer an equitable solution to one thrashed out by lawyers that would further sour relations.

    If we fully pursue this avenue and the RI continues to maintain its belligerent stance, then I agree that we would have to consider following the legal route of seeking revocation, but it should be the last resort, not the first.

    • I’m sorry Mike if you feel I’ve misinterpreted you. If you’re pursuing an approach with the RI that moderates this then great, but some news about that would be good.

      However, given the RI’s financial position, I wonder if their aim is in fact to, after due time for the trademark to bed in, license the term to a big media company themselves in the, long term. As long as they hold this trademark, that is the risk. At this point, and given all they have said and done, I just do not trust them.

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