13 July 2015

A place name, not a brand: Canary Wharf trade mark rejected

The High Court in London has rejected an application by Canary Wharf Group (CWG) to register the words CANARY WHARF as a UK trade mark.

Why did the name of this landmark 97-acre financial, office and retail development fail to qualify for trade mark protection and how do you protect the name of your real estate development?

Trade marks

Every real estate development needs a strong name to build its brand identity. Trade mark registration brings with it a number of benefits. Registered brand names are more easily enforceable against unauthorised users. They can also be bought and sold, licensed and used as security to support a loan.

In order to qualify for trade mark protection, the name must have a distinctive character to distinguish the goods and services of the proprietor from those from other providers. It must not be descriptive of any characteristic of those goods or services, such as their geographical origin.

In 2008, a landmark case brought by Land Securities, Capital Shopping Centres and Hammerson made it easier to register shopping centre names. It established the principle that the services that make up the essence of a shopping centre - such as bringing together a variety of retail outlets, entertainment, restaurant and other services for customer convenience - may be protected by way of a registration for the shopping centre name.

Canary Wharf decision

So why did the Court decide that the name CANARY WHARF should not be registered?

The short answer is that Canary Wharf is a well-known place name. This makes it more difficult for it to qualify for registered protection, because it will be perceived as describing the geographic origin of the services in question. Key factors in the Court’s decision included:

  • The name Canary Wharf has come to be used not only as the name of the estate developed by CWG and its predecessors, but also to denote a wider business district. For example, Canary Wharf is the name for transport links to the area, and of a political ward. Public policy leans against giving trade mark protection to place names and towards keeping them free for all to use.
  • A place name can nevertheless be protected if it is sufficiently distinctive in relation to the relevant goods or services. The services listed in the CANARY WHARF application centred on real estate investment, financing and management, building design, construction, project management, car parking, landscape design and security services. The court ruled that these are the kinds of services one would expect to be provided in or from the Canary Wharf area. Consequently, the name CANARY WHARF was not sufficiently distinctive: the public might understand it to indicate only the location, rather than denoting any monopoly in or control of the services provided under this name.
  • The case was contrasted with Battersea Power Station - a name which had been accepted for registration despite defining a geographical location, in a literal sense. Battersea Power Station was private property. Consequently, the owner could control business activity on the site and the name did not need to be kept free for use by third party traders. The Court was not satisfied that CWG exercised similar control over the services provided on the Canary Wharf estate, where many properties are owned by third parties on a long leasehold or freehold basis.

CWG was unable to save its application by satisfying the Court that the name had acquired distinctiveness through the use that had been made of it.  It may now decide to appeal to the Court of Appeal.  In the meantime, it does already own both a UK and EU trade mark for its logo (combined with the words CANARY WHARF), including for similar services to those that were the subject of this application.

Tips for property developers

Naming a new development after the site or area where it is located is likely to make it more difficult to protect the name. This does not mean there is a blanket ban on registering place names, but it is necessary to establish an element of distinctiveness in the way the name is understood by the relevant public, as denoting a brand and not merely a location.

Developers should apply early for brand protection for new developments. This can be done even before the name is launched, and it may be easier to establish the necessary distinctiveness before the name becomes commonly used.

‘Use it or lose it'. A trade mark is at risk of revocation if it is not put to genuine use within a 5 year period following registration.

A logo may be sufficiently distinctive to obtain trade mark protection even if the name alone is not, and a logo may also benefit from copyright protection.

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