Canary Wharf Group Ltd v Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch)

Regret. “Of all sad words of tongue or pen, the saddest are these: it might have been”.

A trade mark is “descriptive” where it “may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”.

In a recent High Court decision, the owners of the Canary Wharf Estate in Docklands were denied trade mark protection for the name CANARY WHARF on the basis that the name designated a geographical area, and was therefore not distinctive of the owners. 

BACKGROUND

The name Canary Wharf originated from the name given to a shed and quay in the Isle of Dogs areas of London in the 1930’s by a shipping company which imported fruit from the Canary Islands.  In the 1980’s the London Docklands Development Corporation established the Isle of Dogs as an Enterprise Zone to encourage regeneration and development.   Under that scheme a substantial area was developed by and leased comprising some 14 million square feet of office and retail space divided into around 35 different properties (the Canary Wharf Estate).  The name Canary Wharf has been used since the 1980’s to refer not only to the Canary Wharf Estate but also the surrounding financial district, including a Canary Wharf underground station and a proposed Crossrail station of the same name. 

Canary Wharf Group Plc (“CWG”) acquired the Canary Wharf Estate in 1998.  On 6 March 2013 it applied for a UK registered trade mark (the “Application”) for the name CANARY WHARF in respect of a number of goods and services including real estate services, building design and construction services, landscape design, car parking, and security services. 

In October 2014, the Application was rejected by the UK Intellectual Property Office (the “Registry”) on the basis that the sign ‘CANARY WHARF’ was (i) descriptive as it designated a geographical area; and (ii) devoid of distinctive character.  CWG appealed to the High Court.

THE LAW

Under section 3 of the UK Trade Marks Act 1994 (the “Act”) a trade mark may not be registered if it is (i) devoid of distinctive character; and (ii) descriptive of the characteristics of the goods or services for which protection is sought.

The descriptiveness prohibition does not mean that geographical place names can never be protected as registered trade marks.  The circumstances in which protection may be obtained will depend on the facts. 

Under EU trade mark law, the “test” for descriptiveness, and specifically in relation to geographical origin, is whether the name is currently associated with the category of goods or services for which trade mark protection is sought, or, where there is no current association, whether it is reasonable to assume that the sign in question is, in the mind of the relevant the public, capable of designating the geographical origin of the category goods/services claimed. 

The purpose of the objection is, of course, the public interest, namely that descriptive signs or indications relating to goods or services should be freely available to be used by all, and not be subject to trade mark monopolies. 

Thus JERSEY would not be protectable for potatoes or financial services as these are goods and services associated with the island of Jersey, but JERSEY is registered as a UK trade mark for toilet seats!

THE REGISTRY DECISION

In response to the Registry’s initial objection to registration of CANARY WHARF, CWG requested an oral hearing at which it contended that the sign CANARY WHARF was not the name of a place or geographical area, but rather it was a private estate.  It argued that this was no different in principle from the Registry’s acceptance of the name BATTERSEA POWER STATION as a registered trade mark. 

In considering CWG’s arguments the Hearing Officer posed the following question:

How does the public, at the material date of filing, perceive the area known as Canary Wharf  - as an estate/development or as a business district?

He found that the public were not concerned with ownership of a specific development and that the term ‘Canary Wharf’ was, in the perception of the public as of 6 March 2013, a geographical area. 

It is possible to overcome a descriptiveness objection by proving that although the trade mark in issue is inherently lacking in distinctiveness, it has acquired distinctiveness (also referred to as having secondary meaning) as a result of the use made of it by the proprietor.  CWG’s reliance on Acquired Distinctiveness also failed and the trade mark application was therefore refused. 

APPEAL TO THE HIGH COURT

CWG’s appealed to the High Court.  Mr Iain Purvis QC sitting as a Deputy Judge of the High Court  pointed out that the term Canary Wharf was perceived by the relevant public as an area of London with a wide variety of business usage and with its own transport links, rather than a privately owned private estate.  Furthermore the services for which the name CANARY WHARF was sought to be registered were precisely the sort of services which would be expected to be provided in or from the geographical area of Canary Wharf.  The Judge found that the name CANARY WHARF would be likely to be taken by consumers as indicating the geographical origin of all the goods and services in question, or at least capable of doing so.

The Judge considered whether due to the extensive use of the CANARY WHARF name as a trade mark by CWG (and its predecessors) the descriptive meaning of the sign had been displaced in the minds of consumers so that they had come to recognise the name as identifying the relevant goods and services as originating from CWG.  However, he found that this was not supported by the evidence, and CWG’s claim of acquired distinctiveness also failed. 

KEY ISSUES AND LESSONS

  • This case highlights the importance of early registration by property developers of any signs used in respect of new developments, prior to those signs becoming synonymous with the surrounding area.
  • Had CWG's predecessors sought registered trade mark protection[1] at the outset of the development they may well have been successful.
  • These principles apply equally to the branding of residential developments which are becoming increasingly popular in the luxury marketplace.