From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Thursday, 25 June 2015

Canary Wharf: great place name, not much hope for a trade mark ...

Here's a curious tale of a trade mark that might have been. It's Canary Wharf Group Ltd v Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch), an 8 June Chancery Division, England and Wales, decision of Iain Purvis QC, sitting as a Deputy Judge of the High Court on an appeal from the UK Intellectual Property Office.


Canary Wharf Group Ltd (CWG), owners of the Canary Wharf Estate and one of London's best-known and most easily recognised landmarks -- the giant One Canada Square building -- applied to register the word sign CANARY WHARF 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 Canary Wharf had been adopted not only for the commercial development on the Estate but also for transport links to the area (there's a Canary Wharf Station on the Jubilee Line and on the Docklands Light Railway, and a Canary Wharf Crosslink station is being built); Canary Wharf is also the name of a political ward, part of Tower Hamlets, which comprises the Estate and its surrounding area.

The examiner considered that the mark should be refused as being descriptive and devoid of distinctive character, so CWG sought an oral hearing. At the hearing, the Hearing Officer directed that the mark should be refused in its entirety: so far as the mark was intended for services, CANARY WHARF designated their geographical origin and, so far as it covered goods, the mark designated another characteristic of the goods -- their subject matter.

CWG appealed and maintained 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; 
* 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. The question which the Hearing Officer should have considered was whether it was reasonable to believe that the sign CANARY WHARF on a printed publication would be recognised as indicating that the publication was about Canary Wharf. As part of that inquiry, the Hearing Officer should have asked himself whether Canary Wharf was already a common subject for printed publications. The theoretical possibility that Canary Wharf might be in the future the subject of a book or publication was not sufficient. 
* the Hearing Officer ought in any event to have allowed the registration on the ground of acquired distinctiveness.
Iain Purvis QC was unimpressed and dismissed the appeal. In his view

*  the names of most United Kingdom cities and towns were capable, when used in the United Kingdom, 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 however 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 [which is naturally the case, says Merpel, who is indebted to Katfriend Edward Smith for the illustration on the left]).

* the services for which CWG applied to register CANARY WHARF 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.
Tough times for canaries?

* '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 Canary Wharf 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.

The IPKat keeps getting this feeling that things could have been different.  If CWG had applied to register the words CANARY WHARF as a trade mark at the very beginning, when no-one had ever heard of the Canary Wharf Estate and there was nothing there but a giant chunk of derelict Docklands waiting for someone to come along and make it lovely, it would have been difficult to stigmatise it as being either descriptive or lacking in distinctive character, and there is no ground of absolute refusal of a trade mark what relates to the need to keep it free for use as the name of an area or railway station ...

Canary Wharf here and here
Canary Row here

No comments:

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':