Creating a distinctive brand for a property development or estate can help raise its profile, making it more attractive to investors and tenants. It is not, however, just a case of selecting a memorable name.
In the UK, brands are primarily protected by registering names and logos as trade marks. Consequently, some key points of trade mark law need to be born in mind when selecting a brand name, to ensure that it can be used without interference, as well as protected, exploited and enforced.
Trade marks have to be registered in relation to particular goods or services – so before making an application you need to consider carefully what products or services will be provided by reference to the name and by whom – the developer itself, a property management company, the estate owner, or by current or potential tenants?
To be registered, a trade mark needs to be distinctive – it cannot be purely descriptive either of the goods or services themselves or of their qualities. Ideally, the name chosen for a new property development should not just consist of the pre-existing name for its geographical location. Create an original name instead.
Before adopting a name, it is important to check, by way of a clearance search, that there is no one else who is already using, or has registered a trade mark for, the same or a similar name in relation to the same or similar goods or services. Otherwise, there is a risk of costly and lengthy proceedings for passing off or trade mark infringement and a risk of any trade mark application being opposed.
Once you have secured a trade mark registration, you need to make sure that the mark is used as a trade mark and does not simply become known as the name of a location. In 2016, the Canary Wharf Group’s application to register CANARY WHARF as a trade mark was refused because in the years between the development being built and the application being made, the public had become accustomed to using it just to refer to an area of London, with no single company or person responsible for controlling its use. To avoid this, steps must be taken to ensure that the mark is viewed by others as a trade mark. Such steps might include:
- using the name together with the ® or™ symbol (to indicate a registered or unregistered trade mark);
- including a notice on websites and marketing materials that the name is a trade mark;
- using the name alongside a distinctive logo;
- maintaining control over whether others are allowed to use the mark and, if so, how they use it.
If anyone other than the trade mark owner is permitted to use the mark, written terms should be put in place governing their use of the mark. For example, if a tenant wanted to run a hotel or retail outlet from a property on a development or estate and incorporate the trade mark in the name of their business, this should be made subject to conditions of use that could be included either in their tenancy agreement or in a separate trade mark licence.
Finally, if a third party uses a trade mark without consent, steps should be taken to deter them as quickly as possible. Often, a firmly worded letter before action will be enough, but trade mark infringement proceedings might also be considered to protect what can be a very valuable asset.