Canary Wharf Group Plc v The Comptroller General of Patents, Designs And Trade Marks

Under s3(1)(c) of the Trade Marks Act 1994, a geographical name must remain available where it is capable of designating the geographical origin of the relevant goods or services. The assessment concerns the perception of the relevant public and may include goods or services not already associated with the place, provided the association is reasonably foreseeable. For services naturally provided in or to a business district, a broad characterisation of the services may suffice; separate analysis of every specification is unnecessary where no exceptional issue arises. A sign may also be descriptive of the subject matter of printed publications where the goods can convey information about that subject, the public would recognise the sign as indicating it, and the subject is not naturally controlled by one undertaking. Acquired distinctiveness requires evidence showing that a significant proportion of the relevant public regards the sign as indicating trade origin.

Canary Wharf Group Plc applied to register CANARY WHARF for printed matter and publications, and for real estate, construction, parking, design, landscaping and security services. The examiner objected under ss3(1)(b) and 3(1)(c) of the Trade Marks Act 1994. Following an oral hearing, the Hearing Officer refused the application in its entirety in decision O-423-14 dated 3 October 2014.

On appeal to the High Court, the appellant accepted that Canary Wharf was perceived by the public as a geographical area but challenged the Hearing Officer’s application of the geographical-origin principles and his treatment of the class 16 goods. It also argued that the mark had acquired distinctiveness through use. The central issues were whether the sign could designate the geographical origin of the services, whether it described the subject matter of the goods, and whether the evidence established acquired distinctiveness.

1. The appeal was dismissed. The Hearing Officer was correct to refuse the application under s3(1)(c), and the co-extensive objection under s3(1)(b) also stood.

2. The principles in Windsurfing Chiemsee Produktions v Huber [1999] ETMR 585 required consideration of whether the relevant public would regard the geographical name as capable of designating origin. The public-interest rationale includes keeping geographical terms available for traders. The principle extends to the literal area and its surrounding penumbra.

3. The services were naturally provided in, from or to a business district. Since Canary Wharf was famous throughout the United Kingdom, the sign was capable of designating the geographical origin of the specified services. It was unnecessary to analyse every individual service separately because the broad characterisation identified no exceptional issue.

4. For the printed goods, the appropriate subject-matter inquiry required consideration of: the nature of the goods; whether the sign would be recognised by average consumers as indicating a subject matter or theme; and whether that subject matter would be regarded as controlled by one economic undertaking. Printed matter and publications were apt to convey information, and CANARY WHARF would be understood as identifying the Canary Wharf business district. Publications about that district would not ordinarily be assumed to originate from a single undertaking.

5. Acquired distinctiveness had not been established. The evidence showed limited use connected with services provided within the estate, without sufficient evidence of wider United Kingdom trade, promotion or recognition by a significant proportion of the relevant public.

1. High Court (Chancery Division): appeal from the Trade Marks Registry dismissed; the Hearing Officer’s decision O-423-14 was upheld.