Can a Place Name be a Trade Mark - The Case of 'Canary Wharf'

Canary Wharf Group Ltd ("CWG") v Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch), is a recent example of a case on when a place name was not registrable as a trade mark.

Background

The owners of the Canary Wharf Estate applied to register the word sign CANARY WHARF ("Name") for a range of goods and services, including printed matter, printed publications, printed reports and circulars (Class 16) and a variety of services relating to real estate management, construction, project management, building, landscape design and security. The Name had been adopted for various uses including the commercial development on the estate, transport links to the area and the name of a political ward which comprises the development and its surrounding area.

At first instance the examiner refused the mark for being descriptive and devoid of distinctive character.   CWG sought an oral hearing. At the hearing, the Hearing Officer directed that a trade mark for the Name should be refused in its entirety.

Appeal

CWG appealed.  It argued that the Hearing Officer had erred in effectively identifying a 'blacklist' of goods or services (ones which could be considered 'local' in nature) for which any place name would always be refused registration.  It further argued that the Hearing Officer had not applied the correct test in considering the subject matter of the goods and there had been a number of errors in carrying out the assessment of registrability in relation to the geographical origins of the services.  CWG felt that the Hearing Officer ought in any event to have allowed the registration on the ground of acquired distinctiveness.

The appeal was dismissed. The views of Iain Purvis QC, sitting as a Deupty Judge of the High Court, were as follows:

when used in the United Kingdom the names of most United Kingdom cities and towns were capable of designating the geographical origin of services and would be excluded from registration in the absence of acquired distinctiveness, and the public policy underlying the restriction on registration of geographical terms was not served by allowing monopolies to be obtained over town names for services which were already being provided by numerous traders in those towns.

the Hearing Officer may have been guilty of over-generalisation since the mere fact that services are of a kind which one would expect to be provided 'locally' does not mean that there is a blanket ban on the registration of all place names in respect of such services. Locally-provided services may be of a kind which one simply would not expect to be provided in all parts of the country.  For example, an application for the name of a city far inland such as 'Coventry' might be allowed for 'lobster pot repair services' (unless the evidence was that the public would expect lobster pots to be sent away to inland industrial areas to be repaired.

the services for which CWG applied to register the Name were precisely the sort of services that one would expect to be provided from, in or to the geographical area of Canary Wharf and the Hearing Officer's approach to both the law and the facts was basically fine. Whatever potential difficulties might be found in the Hearing Officer's general statement, none of them was capable of affecting the outcome of the case.

the Hearing Officer was not required to deconstruct the application into each individual service and carry out the Windsurfing assessment for each separately, Windsurfing considered. His broad characterisation of the services at issue had been adequate

when a 'subject matter' or 'theme' objection arises, three matters had to be considered. First, the nature of the goods or services for which the application was made, and whether they were, in principle, apt to provide or convey information about (or imagery relating to) the subject matter of the sign. Secondly, the nature of the sign, and whether it was something that it was reasonable to believe would be recognised by the relevant class of persons (namely, average consumers of the goods or services in question) as indicating a particular subject matter or theme. Thirdly, whether the subject matter or theme was of a kind which (in the context of the goods or services in question) the average consumer would consider was controlled by a single economic undertaking, as opposed to something which was free to be used and exploited by anyone.

'printed matter, printed publications, printed reports and circulars' was the paradigm case of goods that were apt to convey information. It was common ground that the Name would be recognised by the great majority of people in the United Kingdom as designating a business district of London. It was therefore inevitable that if the words 'Canary Wharf' were used in the name of a local newspaper or business directory, in the name of a book on modern architecture, or in a printed report on urban development strategy, the public would understand it as designating the Canary Wharf business district. As for the third matter, there was no reason to believe that the public would assume that books or publications about a business district of London were controlled by a single economic undertaking.

it was reasonable to believe that the words CANARY WHARF would be recognised by the relevant consumers as a description of the subject matter of printed matter, printed publications, printed reports and circulars to which they applied.

on the evidence, the Hearing Officer's conclusion that acquired distinctiveness had not been shown was entirely unsurprising, since there was no evidence that the mark had ever been used outside the Canary Wharf estate itself for the goods or services in question. The Hearing Officer had been perfectly justified in rejecting the argument for acquired distinctiveness.