In 1985 HS Tank and Sons Ltd came up with the name OXFORD BLUE as clothing brand and registered OXFORD BLUE that same year as a trademark. The brand was reasonably successful in its chosen markets and between 1992 and 2002 approximately 2.5 million garments branded as Oxford Blue were sold.
In September 2002 Oxford University applied to invalidate the trademark. The grounds for the application were that consumers would be mislead into thinking that the clothing brand was connected with the university and particularly the sporting award given to those who are in the Oxford university sports teams which compete against Cambridge university.
The clothing brand was delighted when the trade mark examiner hearing the case threw our Oxford University's challenge allowing the clothing company to continue using the brands. The main reasons for the decision was that because the University had never carried out any business or commercial activity under the OXFORD BLUE mark it did not have a legitimate business interest to protect.
Comment:
By registering its brand at the outset OXFORD BLUE were in a much stronger position when it came to dealing with the challenge by Oxford University. The burden fell on the university to have the trademark invalidated. The longer the trademark has existed the harder this is to do. If the person challenging has allowed trade to continue under that mark for five years without a challenge, they may be barred from objecting.