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A recent legal battle between Tahl Holtzman and The University of Cambridge has brought to light challenges in trademark for companies based in Cambridge.
The University of Cambridge owns various trademarks for goods and services using the word ‘Cambridge’. When applying to register the trademark, the University claimed that it had an ‘acquired distinctiveness’ stemming from the regular use ‘of Cambridge’ in reference to its work. The registered trademark means that The University of Cambridge can prevent others using ‘Cambridge’ if it believes their brand will be harmed. However, the University rejects the idea that it claims to ‘own Cambridge’.
Recently, Mr Tahl Holtzman applied to trademark his company name, Cambridge NeuroTech. What ensued was an 18 month long legal battle after the University of Cambridge submitted an objection within the last five minutes of the objection window preventing Mr Holzman from trademarking his company.
Mr Holtzman, whose company is based in Cambridge but has no association to the University, claims that his choice in name is an obvious one given the location. The legal battle cost Cambridge NeuroTech £30,000 in legal fees with an outcome which allowed him to register a trademark for goods but not services.
Similar situations have happened in the past with the University having opposed many other trademark applications all of which intended to use their Cambridge location within their company name.
Despite the struggles which have been experienced by many companies based in Cambridge, others have been successful in registering trademarks for their Cambridge companies without opposition. This raises the question of what companies will the University allow and which will be faced with expensive legal battles to trademark their names?
Registration of a trademark including a geographical name is generally prevented. This is because the geographical name often indicates the origin, quality or reputation of a product. It is intended that the geographical place names are kept available and free for all to use.
However, where the place name has acquired a ‘distinctive character’ trademarks will be given where the character identifies the goods being produced exclusively by a particular company.