Cambridge - what's in a name?

What's in a name and who has the right to protect a geographical location?

This was the matter under discussion in recent trade mark opposition proceedings between Cambridge University and Cambridge NeuroTech, over the latter's attempt to register their mark, which includes the word CAMBRIDGE, as a trade mark at the UKIPO.

The application was opposed by Cambridge University, who own a number of trade mark registrations which incorporate the word CAMBRIDGE, for a variety of goods and services. Whilst synonymous with the eponymous University, its registrations also cover unrelated goods and services such as satellite telephones and bibles. The University takes its trade mark rights seriously and in the past has opposed other applications by unrelated third parties due to the inclusion of the word CAMBRIDGE.

Registration of place names as trade marks is possible, but where a place name has an immediate association with particular goods or services, it is up to the applicant to demonstrate that their trade mark has acquired distinctive character in relation to the goods or services for which registration has been sought - which the University has been able to do.

This means that the University is therefore entitled to prevent the registration of trade marks which are identical or similar to their own registrations which include the word CAMBRIDGE, for competing goods or services, as was the case here. However, the UKIPO held that Cambridge NeuroTech was entitled to register their mark for the goods covered by their specification which were deemed not to be similar to those covered by the University's own registrations.

A timely reminder to those selecting new brand names - conducting trade mark clearance checks is a useful way of getting an overview of the state of the register and the rights of third parties who may be able to prevent your use and/or registration of your proposed mark.