Trade Mark and Domain Name Policy
Licensing of the logo
It may be helpful also to summarise the instructions which we have received from the Registrar in relation to the licensing of the logo (the belted arms):-
(1) We endeavour to protect the logo (through trade mark registrations and enforcement), in the classes of relevance to teaching and research; and (by-and-large) in those classes the University does not grant licences. This preserves the value of the brand.
(2) We endeavour to protect the logo in various other classes in order to support merchandising and brand licensing. These are functions of one of the University’s trading subsidiaries, Oxford Limited.
(3) The University will license the logo free of charge in a limited number of situations which are closely related to, and/or supportive of, the University’s teaching and research: viz.:-
(a) use on websites created by research collaborations;
(b) use to identify the University as a participant in a project on the website of a single research collaborator;
(c) use for identification purposes in other one-off teaching or research situations;
(d) use in connection with educational programmes which other parties run here (for example, in Continuing Education); and
(e) use in certain circumstances by those who provide pro bono funding for scholarships and programmes.
(4) However, the University’s policy is not to license the logo for product endorsement purposes (because of the risk of product liability claims: because of reputational risks if customers are unhappy; and because to do so might dilute the brand for the purpose of Oxford Limited’s merchandising).
(5) If there are special circumstances which justify a departure from the policy in (4), any licence of the trademarked logo would be granted not by the University but by Oxford Limited.
Trade Mark and Domain Name Strategy
1. The University is concerned to protect the expressions ‘Oxford University’ and ‘University of Oxford’ in relation to the University’s mainstream activities as an exempt charity: that is to say, teaching and research. Associated with the expressions is the version of the University’s coat of arms which is reproduced in the heading to this paper (“the belted arms”). The University’s central administration is protecting the belted arms and the expressions ‘Oxford University’ and ‘University of Oxford’ by means of registrations in the trade mark classes of relevance to teaching and research.
2. Oxford Limited – a wholly-owned subsidiary of the University – is engaged in merchandising the expressions ‘Oxford University’ and ‘University of Oxford’ and the belted arms on a variety of articles for consumer markets. Oxford Limited is protecting the expressions and the belted arms by means of trade mark registrations in the classes of relevance to those products.
3. Oxford University Press has used the word ‘Oxford’ as a brand for many years. It is protecting this use and the expression ‘Oxford University Press’ through the registration of trade marks in the classes of relevance to its business: that is to say, the classes which cover publishing services, published material and information services (in printed or electronic form).
4. The word ‘Oxford’ is of significant value to the business of OUP. Some of the main titles of the Press would be undermined were other parties in a position to publish the Oxford Series of this, or the Oxford Book of that. It is in the interests of the University as a whole to protect and develop the business of the Press. When the Press generates a surplus, such of that surplus as is not ploughed back into the business of the Press is applied to general University purposes. Therefore the University as a whole stands behind the Press in protecting the use by the Press of the word ‘Oxford’ in the furtherance of all its publishing activities. To support those activities, it has been agreed that authorisation should be sought from the Press where persons or entities within the control of the University wish to make use of the word ‘Oxford’ (whether on its own, within the expressions “Oxford University” or “University of Oxford”, or otherwise) in connection with publishing services, published material or information services (whether in printed or electronic form). This requirement for authorisation has no application to academic exchanges on a non-commercial basis; to the production and distribution of prospectuses, alumni material or research / course information by the University, whether centrally or through departments; or to the University’s central promotion of its core activities. In the case of a party with corporate capacity separate from the University, authorisation will entail a licence from the University in a form agreed by the Press.
5. In the case of publishing activities elsewhere in the University (that is, by entities within the University other than the Press) authorisation under paragraph 4 will be given provided that:-
(a) the word ‘Oxford’ is used in conjunction with the full official name of the relevant entity (for example “department of ….”, “institute of ….” “faculty of ….”) and not an abbreviated name;
(b) the word ‘Oxford’ is not used in a title such as ‘Oxford Series / Book / Review of …………’ or ‘Oxford Studies in ………………’; and
(c) the entity does not, without the prior written consent of the central administration and the Press, apply to register trade marks which include the word ‘Oxford’: any registrations for which consent is given will be in the name of the University.
In the event of a dispute between the Press and another entity within the University over authorisation under paragraph 4 or consent under sub-paragraph (c), the Vice-Chancellor and the Chairman of the Finance Committee of the Press shall seek to resolve the dispute in accordance with the principles set out in this paper, failing which they shall agree on the name of a third party who shall determine the dispute, in accordance with the same principles.
6. The University encourages spin-out companies to use the word ‘Oxford’ in their names, in order to highlight the association with the University. However, it is necessary to put in place a licence from the University (the form of which has been agreed with the Press), so as to protect the interests of the Press in connection with its publishing business. No charge is made for these licences.
7. If a department, faculty, unit, institute or other grouping within the University wishes to use a logo other than one of the marks referred to in paragraphs 1 - 3, this may be permitted, provided that:-
(a) the mark is used in conjunction with the words ‘Oxford University’ or ‘University of Oxford’ and (where appropriate) the belted arms: this may be within expressions such as ‘The Oxford University Centre / Institute of ………’;
(b) the use of the mark is consistent with any visual identity guidelines adopted by the University and this Trade Mark and Domain Name Strategy;
(c) the trade mark agents acting for the University (currently Sipara) confirm that there is no likelihood of conflict with any other marks registered in the name of the University;
(d) the department or whatever requesting the registration covers all the costs involved, including those connected with the maintenance, assertion and defence of the marks; and
(e) approval is given by the Registrar.
8. The University’s policy with regard to Internet domain names follows a similar pattern:-
(a) the Press registers in the relevant generic and country code Top Level Domains (“TLDs”) in order, where possible, to protect its ‘Oxford’ brand: using the registered trade marks, the Press would normally challenge a domain name which includes the word ‘Oxford’, if it is used in connection with publishing services, published material or information services;
(b) similarly the central administration registers in order, where possible, to protect ‘Oxford University’ and ‘University of Oxford’. The administration has acquired the available names in the .edu, .org, .net, .com, .biz, .eu, .info and .tel generic TLDs; but its only registrations in country-code TLDs are in the UK. The University’s policy is that all University activities (other than those within OUP’s remit) should be presented within the ox.ac.uk domain. Oxford University Computing Services (“OUCS”) is solely responsible for controlling ox.ac.uk and its sub-domains. Any department, faculty, unit, institute or other grouping within the University (except OUP) which wishes to make use of any other domain should refer to OUCS for approval (which in general will be granted only in connection with projects which have a wider reach than the University, and which need a distinct and identifiable presence).
9. Only the one firm of trade mark agents is used in relation to both trade marks and domain names. Their costs are apportioned as follows:-
(a) where it is a case of the word ‘Oxford’ on its own, OUP takes the decisions and pays the costs;
(b) where it is a case of ‘Oxford University’, ‘University of Oxford’ or the belted arms within Oxford Limited’s field, Oxford Limited takes the decisions and pays the costs;
(c) where it is a case of ‘Oxford University’; ‘University of Oxford’ or the belted arms in relation to teaching or research, the central administration takes the decisions and pays the costs;
(d) where it is a case of ‘Oxford University’ or ‘University of Oxford’ in other fields, decisions will be made jointly by the Press, the central administration and Oxford Limited, both on the question of whether to take action and on the apportionment of the costs.