Trade mark registration - Canary Warfare in the High Court

In what circumstances are geographical names registrable as trade marks? The challenges are illustrated in the High Court’s ruling in Canary Wharf v The Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 [Ch]

What is this case about?

This case concerns an appeal by Canary Wharf Group (CWG), a London property company, against a decision of the UK Intellectual Property Office (IPO) which refused registration of CWG’s trade mark application for CANARY WHARF (word) filed in March 2013. CWG’s application covered the following goods and services: printed matter (class 16) and services relating to real estate, building construction and design, car parking, landscape design and security (classes 36, 37, 39, 42, 44 and 45). By Decision O-423-14, the Hearing Officer refused the application on the basis of ‘absolute grounds’ as set out in the following provisions of the Trade Marks Act 1994 (TMA 1994):

  • trade marks that are devoid of distinctive character should not be registered (s. 3(1)(b))
  • trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the … geographical origin… or other characteristics of the goods or services shall not be registered (s. 3(1)(c))

The Hearing Officer concluded that the application designated the geographic origin of the services (Canary Wharf) and also designated the subject matter of the goods in class 16. All parties agreed that the s. 3(1)(b) and s. 3(1)(c) grounds covered the same area so the High Court appeal was considered in relation to s. 3(1)(c) only.

What is the law in relation to registering geographical names as trade marks?

TMA 1994, s. 3(1()(c) prohibits the registration of trade marks which may serve, in trade, to designate the geographic origin of goods or services. The case of Windsurfing Chiemsee Produktions v Huber (Joined Cases C-108 and 109/97) [2000] Ch. 523 provides guidance on the application of s. 3(1)(c) (and its corresponding provision under EU law):

  • where marks designate places which are in the mind of the relevant class of persons, associated with the category goods in question, either currently or prospectively, the mark should not be registered
  • If there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the court must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods
  • particular consideration should be given to the degree of familiarity among the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned
  • It is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it

How did the High Court deal with CWG’s arguments concerning registration of a geographic name?

CWG raised various arguments concerning the registrability of CANARY WHARF. Among CWG’s points:

  1. The Hearing Officer erred in his conclusion that name of any place name including a town or village may need to be kept free for services that may be considered ‘local’ in nature eg hairdressing. CWG argued that this effectively created a ‘blacklist’ of services (ie those local in nature) for which place names would always be refused.
  2. The Hearing Officer failed to carry out the Windsurfing Chiemsee assessment in a structured way.

In relation to the first ground of appeal, the High Court endorsed the Hearing Officer’s view though did concede that he may have over-generalised. An exception to the principle expounded by the Hearing Officer would be for services that are local in nature but not provided all over the UK. The example given was using an inland city such as Coventry for lobster pot repair services – local services which would one expect to be provided near the coast. In such circumstances a geographical name for services of a local nature could be registered. However, on the facts of this case the services covered by the CANARY WHARF mark were exactly the kind of services one would expect to be provided in the area of Canary Wharf. The High Court rejected the second ground of appeal finding that the Hearing Officer did carry out a proper assessment by (1) establishing Canary Wharf as a geographical area and notably a business district (2) considering the services covered by the mark (rental, development, construction, design and security (3) considering the relationship between these services and the area of Canary Wharf. The Hearing Officer was correct to conclude that the services covered by the mark would be associated with the area of Canary Wharf in the mind of the average consumer. CWG raised a number of further ancillary arguments in relation to geographic names, all wholly rejected by the High Court who upheld the Hearing Officers decision in relation to the services covered by the mark. The remaining part of the trade mark application (goods in class 16) is dealt with below.

What did the High Court say about the subject matter of the goods in class 16 of the application?

The Hearing Officer also rejected the application in relation to goods in class 16 (printed matter, printed publications, printed reports and circulars) on the grounds that use of CANARY WHARF in relation to these goods designated the subject matter of those goods (TMA 1994, s 3(1)(c)). CWG argued that the Hearing Officer failed to apply the test set out in Agencia Wydawnicza Technopol v OHIM [2011] ETMR 34 ie 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. The High Court agreed with the Hearing Officer’s conclusion but found that some analysis had been missed. When considering subject matter issues, the High Court endorsed the approach taken in IPO decision O-313/11 (NMSI Trading Ltd’s Trade Mark Application (Flying Scotsman):

  • are the goods or services covered by the application apt to provide information about (or imagery relating to) the sign?
  • is it reasonable to believe that the sign would be recognised by the relevant class of persons as indicating a particular subject matter or theme?
  • is the subject matter or theme 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 supposed to something which was free to use by anyone?

On the facts of this case, printed matter was obviously apt to provide information and Canary Wharf would be recognised by the most people as designating a business district of London. Consequently, where the words ‘Canary Wharf’ are used in a printed publication it would be reasonable to assume that the publication would be designating Canary Wharf. In relation to the final point above, there was no reason to believe that the public would assume that publications about Canary Wharf were controlled by a single economic undertaking.

What can prospective trade mark applicants learn from this decision?

This case is a useful illustration and tying together of existing law, particularly in relation to geographic names. If brand owners seek certainty in achieving registration it is advisable to choose a non-descriptive mark which is unrelated to the goods and services in question. However, descriptive marks such as those incorporating geographical names can help to build a powerful brand so it is unsurprising that some brand owners take the risk of filing a contestable application. Geographical names can be registered as trade marks in certain circumstances. For example, there are various registrations for the word mark OXFORD but the goods and services covered by the mark (in one case flight simulators, training of pilots) don’t suggest that the services are provided in Oxford. However, where there is a suggestion that the goods or services come from or are related to the specified area an applicant is likely to encounter problems.

Jessica Stretch, solicitor Lexis®PSL IP & IT team.

This article is republished with kind permission of WIPIT's sister site, Lexis®PSL IP & IT. For a free trial click here.

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