Things have been a bit quiet here for the last 6 months or so on the issue of the Royal Institution’s trademarking of the term ‘Christmas Lecture’ (see here and subsequent related posts). The reason for this is that we – and when I say we, I really mean my friend the intellectual property lawyer – have done some more research, and it seems that things are rather more complicated than we first thought. I’ll copy the full comments from my friend below, but will start with a quick summary.
Firstly, it seems that many of the prima facie objections we might offer – that ‘Christmas Lecture’ is an overly broad term for it to be trade marked, for example – have already been brought up by the Intellectual Property Office. This meant that the RI’s application was objected to by them, and was originally rejected. The IPO is clearly doing its job.
Secondly, the RI wanted this trademark so much that they engaged Olswang, one of the most respected IP & media law firms in London, to act for them. After the initial rejection there was a long process including hearings and evidence taking, that resulted in the award of a trademark to the RI for christmas lectures in the field of science only. One of the key items of evidence that swung the case in their favour was a questionnaire that demonstrated that the public (quite how that was defined is unclear) associated christmas lectures with the RI.
The end result of this is that any attempt to challenge this trademark has to go up against Olswang, and has to provide evidence that will call into question what they have already done to support this trademark. That is going to be significantly more expensive than a simple challenge on the basis of what has already been discussed, because the IPO has already made those objections.
That’s why I’ve been silent on this – I’ve no idea what the next step should be or how it might be funded.
Also, as we have approached the Christmas period, I’ve not heard any reports of science-based Christmas lecturers being hassled by the RI. If so, it could be argued that they’re not defending this trademark that they have acquired at, it would appear, no little expense.
So that’s where things stand. Appended below is my friend’s report. Further documentation is available.
The IPO has sent me its file on the RI’s trade mark application – and interesting reading it makes too… In summary what happened is this:
29 June 2011 – RI makes its application
5 July 2011 – IPO starts assessing the proposed TM
13 July 2011 – TM examiner Sarah Philpot notes that she is objecting to the application. She writes to the RI’s trade mark agents, Olswang, explaining her refusal on the basis that the trade mark is purely descriptive
6 Sep 2011 – Olswang (for the RI) writes asking for an extension of time to file evidence in support of its application which the IPO agrees
11 Nov 2011 – The RI produces a 14-page witness statement with 28 exhibits from Dr Gail Cardew, Director of Science and Education. The exhibits are listed in what seems to be the IPO’s review of them, again commenting that they are evidence of descriptive use.
15 Nov 2011 – Olswang files an 8-page letter setting out the basis of its disagreement with the IPO’s rejection of its application
[The IPO shows] other uses of ‘Christmas Lecture’. These are the results of the IPO’s own searches (see below)
15 Dec 2011 – Sarah Philpot again says in a note that the evidence does not overcome the IPO’s objection.
15 Dec 2011 – Sarah Philpot writes to Olswang rebutting the objections to the refusal of the trade mark – this refers to the evidence where lots of other uses of the term were found.
14 Feb 2012 – Olswang seeks a hearing before a senior trade mark officer and the IPO acknowledges this
It clearly took some time to set up a hearing
26 Sep 2012 – Stephen Lurvey at the IPO writes to Olswang confirming 13 Nov 2012 as the hearing date.
5 Nov 2012 – Olswang confirms that Kathtin Vowinckel will act on behalf of the RI at the hearing
13 Nov 2012 – Hearing takes place before Carol Bennett, hearing officer.
From the record of the hearing it is apparent that Ms Bennett took account of the 200 year history of the RI Christmas Lectures and evidence of the 40-year history of their being televised, together with survey evidence from the RI about the term. She agreed that the term had acquired distinctiveness through use but held that this was only in the field of science lectures.
19 Dec 2012 – Olswang write accepting that the trade mark should be limited to the field of science.
2 Jan 2013 – Carol Bennett writes to Olswang confirming that the trade mark will be approved on the basis of distinctiveness acquired through use, and provides a draft of how the trade mark will be advertised in the Trade Mark Journal
Several things strike me from this. Firstly, the RI really, really pushed this. When its application was rejected it sent a very long and detailed witness statement and a detailed submission on why its application should be allowed. When that was rejected it sought and obtained a hearing at the IPO, for which it obtained survey evidence about the public perception of the term.
Secondly, the RI did all this via Olswang. Olswang is one of the biggest name IP and media law firms in London and I would not like to hazard a guess at what all this cost the RI.
… We now know a lot more, but it does seem that all our potential objections have already been raised internally by the IPO and were the subject of a contested hearing. An application to have the trade mark declared invalid would in effect be seeking a re-hearing of that, and unless we could provide compelling evidence to add to the substantial list the IPO’s own examiners found then I am doubtful that we would get much further. It’s also clear that the RI has seen fit to expend a lot of effort (and I am sure a lot of money) on getting this trade mark and it would probably want to fight its corner so as not to risk wasting that.
In short, the RI does seem to have convinced the IPO that it really has managed to get public association with the term ‘Christmas Lecture’.
So there it is, we’re a bit stuck.
I’d be interested to hear any reports of the RI trying to enforce its shiny new trademark on scientists given Christmas Lectures this year. If it hasn’t, then it might appear that they have scored a rather pyrrhic victory, expending a lot of money on something they might have chosen not to enforce.