Universities are becoming more aware of the importance of protecting their brands. More and more universities are applying to register their trade marks. An example of a recent application, however, demonstrates the need to take care when creating a new brand.
Newcastle University recently decided to re-brand in an attempt to make its website easier to find, particularly for international students. It filed applications with the U.K. Intellectual Property Office to register 'Research University of Newcastle upon Tyne', 'Civic University of Newcastle upon Tyne' and 'Central University of Newcastle upon Tyne'.
At a first glance these phrases may look innocuous, but in this sector, where there are numerous institutions and courses, the use of abbreviations and acronyms is commonplace. It is important to consider this when branding. Unfortunately for Newcastle, it does not appear that this was the case as, when used as an acronym, the phrases become RUNT and another unpublishable phrase.
Newcastle is by no means the first university to apply to protect its brand. In 2011 Oxford University successfully registered 'New College Oxford' as a trade mark after a tussle with AC Grayling's New College of the Humanities. Oxford also owns numerous other trade marks, some being registered for obscure goods such as animal skins, ivory, whalebone and live animals. University College London also joined in on the act in registering its trade marks for obscure goods such as massage apparatus and preparations for destroying vermin. To avoid cancellation of a registered trade mark, trade mark owners must actually use the mark in relation to the goods and services for which it is registered. Failure to do so could mean the end of registered protection for those goods. It is therefore important to get the initial application right to avoid further problems down the line.
Registering a trade mark gives any business, including universities and colleges, the exclusive right to use that mark for the purposes of identifying their goods or services within the UK. It also makes it easier to take legal action against scammers who are trying to ride on the coat tails of your brand.
The importance of protecting your brand (and registering your domain name) was recently highlighted to one of our university clients, who came across a website passing itself off as the official university website. The website used the university's logo (which was protected as a registered trade mark) as well as using the university's name as part of a .org domain name. The infringing website encouraged visitors to call a premium rate phone number, upon which they heard a recorded message saying there was no-one available to take their call, and asking them to leave a message for a call back. Of course, there was never a call back but the caller was left with a hefty telephone bill. The university owns registered trade mark rights in its name and its logo, so we were able to contact the web hosting provider, who took the site down immediately. Without such protection the university could have found itself embroiled in costly and lengthy litigation to obtain the same result.
Unfortunately this is not the only example of this type of infringement, which happens all too frequently in this sector, with infringers preying on vulnerable students, especially those from overseas. With such scams being so commonplace, the importance of protecting your brand (and registering the correct domain name variations) cannot be underestimated.