Can a property development be trade marked?Print publication
The High Court has rejected an appeal against the refusal of an application for registration of the name CANARY WHARF as a trade mark. The application was made by Canary Wharf Group plc (the Group) in respect of a variety of goods and services, including property development and maintenance services, car parking services, building and landscape design services and security services.
Place names, designating the geographical origins or other characteristics of goods and services, are generally not capable of registration as trade marks in the UK unless the name becomes distinctive through use. In this case, the Group argued that CANARY WHARF was the name of a private building development, rather than a place name, and was analogous to other landmark buildings whose names had been registered as trade marks, such as The Shard.
The Hearing Officer disagreed, finding that there were currently 35 buildings in the Canary Wharf area and that the Group was not the freehold owner of all of them. More interestingly, the Hearing Officer also noted that the Group had delayed filing the application for nearly 30 years from the date that development started on the Canary Wharf site, which had (in the Hearing Officer’s words) “allowed some thirty years of uncontrolled media coverage to, at the very least, render the factual basis of ownership/control obscure as far as the relevant consumer or wider public is concerned”.
On appeal , the Group argued that the approach of the Hearing Officer was flawed and also that the mark had acquired distinctiveness. The High Court disagreed, finding that the Hearing Officer had been correct to conclude that the sign CANARY WHARF was likely to be taken by consumers as indicating the geographical origin of the services in question, or to at least as being capable of doing so. On acquired distinctiveness, the High Court found that the Group’s use of the mark in the course of running the estate was limited to services provided within the confines of the estate and the only use outside of that area was for the promotion of the Canary Wharf shopping centre. Since “retail services” was not among the classes of services in respect of which registration was sought, this was found to be irrelevant.
This case is a clear reminder of the need for property developers to file trade mark applications at the time of development (or as soon as possible thereafter). It is fair to suggest that once a Tube stop has been named after your development, it is probably too late to get the trade mark registered!
 Canary Wharf Group Plc v The Comptroller General of Patents, Designs and Trade Marks  EWHC 1588 (Ch), 8 June 2015.