Private property estates: Register trade marks early to avoid disappointment (Canary Wharf Group Plc v The Comptroller General of Patents, Designs and Trade Marks)

United Kingdom

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

The Applicant, Canary Wharf Group, is the owner and developer of the Canary Wharf Estate, a large area of office and retail space in the Canary Wharf area originally purchased in 1987 and transferred to CWG around 1998.  In March 2013, CWG applied to register CANARY WHARF for various services including real estate investment, car parking and building construction services and printed goods.  The UK application was rejected on the basis of sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994 (i.e. on the basis that the application was devoid of distinctive character and descriptive) and the Applicant appealed to the High Court the refusal on the following grounds:

1 - By applying blanket refusals, the Office was effectively creating a "blacklist" of goods and services for which any geographic place name would always be refused

This was not accepted.  The fact that most of the goods and services applied for are commonly provided in virtually all UK population centres suggested that the Office was correct in their assessment of the mark as descriptive and devoid of distinctive character.

2 - The Windsurfing Chiemsee criteria were not applied in a structured way

This was not accepted either.  Although the Applicant argued that the name CANARY WHARF refers only to a private estate and is therefore not a place name of a geographical area, the court held that CANARY WHARF is now well known to the relevant public as a business district.  As such, taking into account the goods and services applied for, it is likely to be understood by those consumers as an indication of the geographical origin of those services.

CWG's also argued that there was no public policy case to apply because CWG controlled the entire estate.  However, the court rejected this as it could not serve the public interest to restrict potential future third parties and reinforce CWG's monopoly.

3 - The Office should have considered whether "Canary Wharf" was a common subject for printed materials rather than refusing the mark on the basis of a theoretical possibility that it might be a future subject of printed materials

This was also rejected.  The high degree of recognition of the mark CANARY WHARF suggests that could plausibly be understood as a description of the subject matter of printed materials produced by the Applicant.

4 - CANARY WHARF had, in any event, acquired distinctiveness through use

As the evidence adduced by the Applicant in respect of the goods and services applied for was limited to the geographical area of the estate, the court upheld the hearing officer's finding that there was no acquired distinctiveness.

Analysis

The Applicant's arguments that CANARY WHARF referred to a private estate and was not a place name or geographical area could have had traction before the surrounding area's extensive growth.  The case shows that it is vital to register new property developments as trade marks early to qualify for protection before they become synonymous with the surrounding geographical area, although there may be some scope for latecomers to obtain trade mark rights on the basis of acquired distinctiveness if they can demonstrate a reputation that extends beyond the geographically limited area in question.