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.
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.
It’s the time of year when not much happens at universities except exams, marking exams, and meetings about exam marks – at least that’s what June means here at Imperial. So things have been a bit quiet on this side of the Royal Institution trademark business. But then things have been quiet on their end as well.
Nevertheless, a request has been put in to get a copy of the trademark application file. This is the first step towards a challenge, since at the moment we don’t know the details of what might be challenged. Current informal legal opinion from several directions remains that trademarking ‘Christmas Lecture(s)’ is very dodgy indeed.
More news, as they say, when we have it.
I got this at the end of last week from the RI. Interpreting it is likely meaningless Kremlinology, but it might indicate things are still moving.
Just wanted to drop you a quick line to say that we are assessing our position in response to concerns about the trade mark thoroughly, something which I’m sure you’ll understand takes time to do properly. We’ll get back to you in due course.
There have also been a few further steps in informal discussions about the law regarding this trademark.
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.