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Property developers: don’t delay in filing your trade mark application

Print publication

18/11/2014

An application for registration of the name CANARY WHARF by Canary Wharf Group plc (the Group) as a trade mark has been refused. The application was made 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 that designate the geographic origins or other characteristics of goods and services are generally not capable of registration as a trade mark in the UK unless the name has become 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 freeholder of all of them.

Further, the Group had delayed filing its application for nearly 30 years from the date development started on the Canary Wharf site. In the Hearing Officer’s words: “This has 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”.

Not only is this case 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), we think it’s fair to say that once you have had a Tube stop named after your development, it is probably too late to get the trade mark registered!