Canary Wharf loses appeal against refusal of its trade mark

09/06/15

The owner of the Canary Wharf development in London applied in March 2013 to register the trade mark “Canary Wharf” for a range of goods and services including real estate investment, car parking and building construction services. The evidence showed that the name seemed to originate from the 1930s when the Fred Olsen shipping company used a shed and quay within the West India Docks for the importation of, among other things, fruit from the Canary Islands. The name was then used more widely from around the mid-1980s as the name of the current financial centre.

At first instance Canary Wharf argued that its name was not a place name or geographical area but only referred to a private estate which it controlled and maintained. Trade marks cannot be registered if they consist exclusively of a sign which may serve in trade to designate the geographical origin or other characteristics of the goods or services.  The examiner of the application and the first instance decision both concluded that the application failed for all goods and services on that basis.

On appeal it was argued that the decision below failed to apply properly the existing case law on geographical objections to trade marks. In the appeal decision the court clarified that there is no requirement that there has to be a UK-wide association with the sign for which registration is sought. A large number of services are of a kind which one would expect to be available locally in any major centre of the population in the UK which would suggest that the name of that centre should not be registered. However, locally-provided services may be of a kind that one would not expect to be provided in all parts of the country. The example given was that, depending on the evidence, the name of a city far inland such as Coventry might be registrable for something like ‘lobster pot repair services’.

Canary Wharf also argued on appeal that there was no public policy objection to registration of the trade mark in circumstances where Canary Wharf controls the whole of the estate and no-one other than the applicant is permitted to provide those services in that area. The court rejected this argument on the basis that it may serve the applicant’s private interest to restrict third parties from providing services but it hardly serves the public interest.

The conclusion was that the appeal was rejected and the application refused.

The judgment is here.