The Argyll Arcade is Scotland's oldest shopping centre. It is steeped in history and is a true architectural gem that up until 1921 was owned by the Cranston family and as such is a well-known landmark in Glasgow. However, unbeknown to the myriad of customers who have passed through the L-shaped corridor over recent years the unique centre has been the focus of a bitter row between one shop owner, Mr Hill, who in 2008 successfully registered as a trade mark the name 'Argyll Arcade', and the other shop owners who recently won their quest to invalidate the mark.
The trade mark was challenged on the grounds that as an address shared by several other businesses it was devoid of distinctive character, the mark described the geographical origin of goods, the mark was not capable of distinguishing any goods, and the mark was obtained and used in bad faith with the trade mark owner attempting to gain financially from other businesses who were entitled to use it.
In response, the trade mark owner argued that 'Argyll Arcade' was the name of a property and not a geographical location. He made the comparison with department stores that house concessions of other businesses within its premises that trade under an overall mark but contain franchises operated by other retailers. Further to this he argued that a person using it as part of their address would not infringe it and that in any event he had offered to license the trade mark (at a cost of £2,000) for trade mark use beyond the use of an address. Finally, he pointed to Rox (UK) Ltd, one of the parties to the action, who had registered www.argyll-arcade.com as a domain name and argued that this was inconsistent with the bad faith claim.
The UK IPO office held that bad faith includes dishonesty and ''some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular field being examined.'' A combined test is adopted - what did they know at the time and did this fall short? The issue to be determined by the IPO was whether the application for a trade mark by Mr Hill was, in effect, a monopolistic intellectual property right in the name 'Argyll Arcade' and was an act that fell short of commercially acceptable behaviour.
The registration of domain names and the registration of a trade mark are similar acts, however they have very different consequences. A domain name does not prevent use by other traders of any sign in the course of trade; it simply reserves a particular web address and other businesses can choose similar web addresses. In any event the web address registered by Rox (UK) Ltd was held by the IPO to be a genuine marketing tool for the other business in the Argyll Arcade as it lists all the traders in the Arcade and sponsored links are available to those who wish to advertise on it more prominently.
The IPO was of the opinion that Mr Hill clearly knew that the Argyll Arcade was a physical location and a focal point in Glasgow for the jewellery trade and related goods. A trade mark provides its owner with an exclusive right to prevent others using it in the course of trade - a monopoly right - not a right to monopolise the name. Mr Hill's offer to license the trade mark was interpreted by the IPO as showing knowledge of the potential impact the registered trade mark would have on other businesses in the arcade and showed that Mr Hill's intention fell short of acceptable standards.
The Argyll Arcade incorporates a truly dazzling array of jewellery shops and has a glistening reputation that is generated and shared by all the occupiers of the centre. Since the Cranston family, no one single entity has owned the Arcade and as such no one has an inherent right to the name. However, the case turns on its facts and whilst the name 'Argyll Arcade' is not capable of being registered in these circumstances, this does not prevent the names of other shopping centres from becoming registered trade marks.