The UK media loves what is often dubbed a 'David v Goliath' trademark story.
When a major brand targets a small start-up business with a trademark infringement lawsuit or a cease-and-desist letter, you have the perfect recipe for a headline-grabbing “company X claims to own term Y” story.
It happens once a month or so.
Just days into 2024 and the dispute whetting the press’s appetite is the University of Cambridge’s opposition to several UK trademark applications that use the term ‘Cambridge’ and which were filed by businesses based in or around the city.
Normally, I would take only a passing interest in such an article, but this one intrigued me for two reasons.
First, Cambridge is my hometown, and second, an IP practitioner on LinkedIn drew my attention to the “ridiculously high” £30,000 ($37,000) costs that had reportedly been incurred by one of the parties involved.
Most people reading this probably hear ‘Cambridge’ and automatically think of the university.
Aside from the world-class educational facilities, the city does boast a flourishing science and research sector, with pharma company AstraZeneca headquartered there. But overall, it’s probably the University of Cambridge that most people think of.
I suppose that adds weight to the university’s opposition.
As it happens, when I hear the word ‘Cambridge’ several things that have absolutely nothing to do with the university come to mind: Ballare nightclub, The Regal pub, and footballer Dion Dublin, to name a few. But I suspect none of those recollections would weigh in my favour in a trademark dispute.
Anyway, on to those costs.
The article in question details a few disputes involving the university and local Cambridge businesses that have been ongoing for the last year or so.
One of them, Cambridge Neurotech, told the BBC it had spent £30,000 after an 18-month legal battle.
The company, whose application for its name was opposed by the university in 2019, was eventually allowed to register a trademark covering some, but not all, of the goods it had applied for.
Cost cutting
The BBC’s report only briefly mentioned costs. But is £30,000 ridiculously high, as the IP practitioner claimed?
I must admit I’m not particularly familiar with what one company may or may not spend during a trademark prosecution process, including dealing with oppositions.
But £30,000 does seem a lot on the face of it, particularly when this dispute played out at the UKIPO where costs are generally expected to be lower than in court.
Some attorneys I sought the advice of agreed.
Lee Curtis, partner at HGF in the UK, says that typical costs to prosecute or defend oppositions would generally be significantly lower.
“However, if it was a very evidence-intensive set of proceedings and a barrister was involved, these costs are not totally out of the question,” he adds.
As it happens, a barrister was involved.
Cambridge Neurotech was represented by law firm Bracher Rawlins, which instructed Jamie Muir Wood of London-based Hogarth Chambers. The university was represented by law firm Stobbs, which did not instruct a barrister.
One UK attorney who regularly prosecutes applications at the UKIPO says the decision to instruct a barrister may have contributed to the high costs.
“If barristers are involved in a hearing, that can add another 50% on top of the costs,” she adds.
It’s not for me to say whether Cambridge Neurotech should have demanded a barrister or not; presumably the company thought it would have offered the best chance of success.
Bracher Rawlins would have made the company fully aware (or at least I hope they would have) that costs would rise significantly as a result.
I’ve spoken before about some parties’ reliance on barristers and whether it is wholly necessary – particularly in out-of-court disputes such as this where plenty of talented solicitors and attorneys can act for clients and save them money.
The UK attorney notes that some clients also like to be kept informed of any changes in a firm’s personnel or set-up during a proceeding, work which can take up some of the firm’s time.
The longer a hearing runs (in this case 18 months), the more updates may be needed.
Mountain of work
Another element to consider is the work Bracher Rawlins may have had to do on behalf of its client.
Another UK-based attorney notes that what should be a routine response to an opposition can sometimes become a long-winded process.
He says some parties must often wade through a mountain of evidence filed by the other side, without really knowing if those issues will arise during the formal hearing.
“There is, therefore, inequality of arms as the applicant is landed with a vague case with a barrel-load of evidence from the other side,” the attorney says.
He adds: “The applicant is put to a lot of additional work which is ultimately unnecessary and wasted, or which could have been significantly less if the evidence was well-marshalled and directed.”
I suppose in this scenario the question is two-fold (and this could apply to several cases).
First, should the firm responding to the opposition advise the applicant that it may have to sift through a mountain of evidence while costs pile up, and therefore suggest alternative pathways like alternative dispute resolution or a settlement?
Much of this will be out of a firm’s hands and will depend on how headstrong the client is, but it could save applicants a lot of money.
The other question is whether the evidence-laden approach adopted by opposition filers is fair.
It has been criticised in the past. In a 2019 case that also involved the University of Cambridge, the institution opposed a trademark application by a company called Cambridge Quantum Computing.
Stobbs, which also represented the university in that dispute, was criticised by the UKIPO’s hearing officer for creating “significant work for the applicant and the Tribunal” which it said was “merely seeking to overwhelm the applicant”.
Curtis at HGF agrees that firms should consider their evidence submissions carefully.
“Sometimes, less is more. There is a natural tendency sometimes for parties to ‘overdo’ the evidence submissions. Parties can often submit irrelevant evidence and submissions. One should always concentrate on only submitting evidence of facts on pertinent points and no more.”
Considering the volume of evidence and the fact a barrister was instructed, £30,000 may not be so crazy after all.
In future cases, firms and clients may wish to consider entrusting an attorney or a solicitor and to take more of a back-seat approach.
But given the Cambridge Neurotech dispute resulted in only a partial victory for both sides (and a hefty bill to boot), perhaps a simpler option would have just been to settle.
Bracher Rawlins and Stobbs were contacted for comment but neither had responded at the time of publication.
