Cambridge University secures partial TM victory
Cambridge University has secured a partial trademark victory against Cambridge NeuroTech, a neuroscience biotech company, before the UK Intellectual Property Office (IPO).
On Thursday, February 21, the IPO allowed Cambridge NeuroTech to register its ‘Cambridge NeuroTech’ trademark in class 9 but refused its application in respect of class 42.
In August 2017, the biotech company applied to register its logo in class 9 for goods including scientific, measuring and recording apparatus and instruments, and services in class 42 for product research and development, in the field of neuroscience research, surgical procedures and sensor technology.
The Chancellor, Masters and Scholars of the University of Cambridge opposed the trademark, citing four earlier UK trademarks and two earlier EU trademarks.
At a subsequent hearing, the university’s representative identified reliance upon ‘Cambridge’ (EU mark 12,019,733), which covers classes 9, 16 and 41.
In a counterstatement, Cambridge NeuroTech denied the claims, stating that the word “Cambridge” is a geographical indicator and of low inherent distinctiveness. It also claimed that the word “Neurotech” and the device element renders the marks dissimilar.
According to a witness statement from Clare Dewhurst, brand protection manager at Cambridge University, the university consistently refers to itself simply as Cambridge and is known as such due to its fame and reputation.
It also has a “long and proud history of pioneering research in the field [of] neuroscience”, said Dewhurst, adding that the university set up Cambridge Neuroscience in 2007, a strategic research initiative which now involves over 700 researchers.
Tahi Holtzman, director of NeuroTech, argued that while the university has a prestigious reputation for research, it doesn’t appear on the first page of Google search results using terms such as “neuroscience university” and “neuroscience Cambridge”.
Holtzman went on to claim that the university is “largely invisible” when average consumers across the world search for universities which are closely associated with neurotech, said the IPO.
Mark Bryant, on behalf of the IPO, found that the marks had a medium level of visual, aural, and conceptual similarity.
He concluded that the university’s ‘Cambridge’ mark has a very low level of inherent distinctive character, but that the character is enhanced through use in respect of “undergraduate education” and “postgraduate study”.
For class 9 goods, Bryant noted that while the goods were identical, there was an enhanced level of attention by the relevant public and a very low level of distinctive character.
“When this is considered together with the fact that Cambridge is the name of a town in the East of England, it is my view that the applicant’s mark will be perceived as indicating neurotechnology goods originating from the town of Cambridge and, consequently, not being perceived as a reference to the opponent’s mark,” said Bryant.
Turning to services in class 42, he concluded that because the university’s mark benefits from an enhanced distinctive character for education, consumers are likely to perceive the mark ‘Cambridge’ as a reference to the university and not the town.
Bryant added: “Therefore, when considering the applicant’s mark in its entirety, the consumer is likely to perceive it as indicating services that are provided by the university or with its consent, an undertaking linked to the university.”
Cambridge University’s argument of passing off was also accepted by the IPO for class 42, but rejected for the goods in class 9.
The IPO ordered both parties to bear their own costs.
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