About the author
Daniel Bailey is an associate at Appleyard Lees IP LLP. Daniel is a dual-qualified trade mark attorney and solicitor and is experienced in clearing, registering and enforcing trade marks. His experience working in-house at a major retailer means he understands the need for commercially led advice.
In a recent decision[1], the UK Intellectual Property Office (UKIPO) found in favour of Cambridge University and upheld an opposition against a trade mark application for CAMBRIDGE BLUE.
In February 2019, Chadlington Brewery Limited (the Applicant), filed an application to register CAMBRIDGE BLUE in relation to beers and beer-based beverages. The application was opposed by The Chancellor, Masters and Scholars of the University of Cambridge (University of Cambridge) on the basis of its earlier rights for a number of marks which consist of or include the word CAMBRIDGE.
Amongst other claims, the Applicant argued, unsuccessfully, that there are a number of other marks in the marketplace which incorporate the word CAMBRIDGE and that they also use the mark OXFORD BLUE in relation to beer and, therefore, there is no likelihood of confusion. Unfortunately, neither of these arguments were persuasive.
In summary, the UKIPO found:
- there to be a likelihood of confusion between the marks
and CAMBRIDGE BLUE due to the similarity of the marks and the similarity of the goods, consumers would assume the beer sold under CAMBRIDGE BLUE originates from University of Cambridge; - that, on account of the goodwill in the name CAMBRIDGE in relation to the university, academic studies and research, and the Applicant’s intention to connect the mark with University of Cambridge (on account of the marketing material showing references to the Boat Race) “a substantial number of members of the public will naturally assume…that there is a material connection between the (parties)”. Accordingly, the UKIPO found that there would be damage to goodwill of University of Cambridge and, therefore, the opposition succeeded on the basis of passing off;
- that the University of Cambridge has a reputation in the word CAMBRIDGE for the university, academic studies, and research and that a significant part of the public who recognise the earlier marks are aware of the use of CAMBRIDGE BLUE by University of Cambridge (in relation to sporting activities). The false message by the Applicant that the goods are connected with University of Cambridge and would give them an unfair advantage.
and CAMBRIDGE BLUE due to the similarity of the marks and the similarity of the goods, consumers would assume the beer sold under CAMBRIDGE BLUE originates from University of Cambridge;In this case, it’s clear that the Applicant was sailing too close to the wind and the application was rejected in its entirety. Whilst the decision itself is perhaps not surprising, it highlights the benefit of undertaking clearance searches prior to using or applying to register a new mark. The Applicant themselves may have been surprised that the application for CAMBRIDGE BLUE was opposed, when their application for OXFORD BLUE did not face such difficulties.
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[1] Chadlington Brewery Limited vs The Chancellor, Masters and Scholars of the University of Cambridge
