Trade mark registration - Canary Warfare in the High Court

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

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