Canary Wharf Group Plc v The Comptroller General of Patents, Designs and Trade Marks
| Jurisdiction | England & Wales |
| Judge | Iain Purvis |
| Judgment Date | 08 June 2015 |
| Neutral Citation | [2015] EWHC 1588 (Ch) |
| Date | 08 June 2015 |
| Court | Chancery Division |
| Docket Number | Case No. CH/2014/0564 |
[2015] EWHC 1588 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(APPEAL FROM THE INTELLECTUAL PROPERTY OFFICE
TRADE MARKS REGISTRY)
Rolls Building
7 Rolls Buildings
London EC4A 1NL
Iain Purvis QC sitting as a Deputy Judge of the High Court
Case No. CH/2014/0564
Mr Simon Malynicz (instructed by Clifford Chance LLP) for the Appellant
Mr Nicholas Saunders (instructed by the Treasury Solicitor) for the Respondent
Hearing dates: 6 May 2015
Iain Purvis QC:
Introduction
This Appeal concerns trade mark application 2655156 ('the Application') which was filed by the Appellant, Canary Wharf Group Plc ('CWG') on 6 March 2013.
The Application was to register the sign 'CANARY WHARF' in relation to the following goods and services:
| Class 16 | Printed matter, printed publications, printed reports and circulars |
| Class 36 | Real estate affairs; real estate investment; financing services for real estate development; real estate management; real estate appraisal and valuation; real estate leasing; real estate rentals; information, consultancy and advisory services relating to the aforesaid services |
| Class 37 | Building construction services; construction project management services; on-site building project management; property development and maintenance services; information, consultancy and advisory services relating to the aforesaid services |
| Class 39 | Car parking services; parking place rentals; information and advisory services relating to the aforesaid services |
| Class 42 | Building design services; advisory services relating to building design; information, consultancy and advisory services relating to the aforesaid services |
| Class 44 | Landscape design; information, consultancy and advisory services relating to the aforesaid services |
| Class 45 | Security services; information, consultancy and advisory services relating to the aforesaid services |
The examiner took issue with the registrability of the Application on the basis of the 'absolute grounds' of objection set out in s3(1)(b) and s3(1)(c) of the Trade Marks Act 1994. He considered that the mark should be refused in its entirety on both grounds. CWG asked for an oral hearing which took place before the Hearing Officer Mr Edward Smith. The Hearing Officer handed down his decision O-423–14 on 3 October 2014 which confirmed the position taken by the examiner and directed that the mark be refused in its entirety.
It was common ground on this appeal that the grounds for objection under s3(1)(b) were co-extensive with those raised by the s3(1)(c) objection. I shall therefore consider the appeal on the basis of s3(1)(c) only. For convenience, I set out the relevant terms of s3(1)(c) below:
s3 (1) The following shall not be registered:
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the … geographical origin … or other characteristics of goods or services
The Hearing Officer refused the application insofar as it covered 'services' (classes 36, 37, 39, 42, 44, 45) on the grounds that it designated the geographical origin of the services, and insofar as it covered goods (printed matter, publications etc. in class 16) on the grounds that it designated another 'characteristic' of the goods namely their 'subject matter'.
Factual and historical background
Before considering the relevant legal principles and the scope of the dispute before me, it will be of assistance to set out the factual background.
In 1982, as part of a policy to develop run-down post-industrial parts of the country, the government agency known as the London Docklands Development Corporation ('LDDC') established the Isle of Dogs area of London as an Enterprise Zone. In the North of the Isle of Dogs was the former dockland area known as West India Docks. A large part of West India Docks, referred to as 'Canary Wharf', was sold in 1987 for the purposes of development to a company controlled by Olympia & York, who in turn leased it to a related company called the Canary Wharf Development Co. Limited ('CWDC').
Precisely how and why the area sold to CWDC came to be called 'Canary Wharf' is not entirely clear. The name itself seems to date back to the 1930s when it was given to a shed and quay within the West India Docks controlled by the Fred Olsen shipping company and used for the importation of fruit from (inter alia) the Canary Islands. The first use of the name in respect of the proposed development, which of course covers a greater area than the Fred Olsen quay, seems to date from around 1985. It is used for example in a News Release from the LDDC dated 18 October 1985 headed 'Corporation Board Committed to Achieving Canary Wharf Financial Centre Development'. From that time, it seems to have been used consistently.
By 1992 Olympia & York had completed the construction of a number of buildings on the site including One Canada Square, then the UK's tallest building. The development became a symbol of post-industrial regeneration. Unfortunately, the development coincided with a world-wide economic downturn and a recession in the UK in the early 1990s. CWDC went into administration. The Canary Wharf development was purchased from the adminstrators by another consortium of investors led by Paul Reichmann in December 1995. The freehold of the property was purchased by a company called Canary Wharf Investments Limited in March 1998, and was then transferred to CWG. Ownership of CWG has since changed hands. It now refers to itself as a 'wholly owned joint venture between the Qatar Investment Authority and Brookfield Property Partners'.
The present situation is as follows. The area originally purchased by CWG, which they refer to as the 'Canary Wharf Estate', comprises some 14 million square feet of office and retail space divided into around 35 different properties. 18 of these properties are leased by CWG on short leases to third parties. The rest have been sold off, either on long leaseholds (13) or by selling the freehold (4). There are, not surprisingly, a number of contractual covenants in the various forms of lease (and indeed with the purchasers of freeholds) which place restrictions on the activities which can be carried on in the Estate.
The name Canary Wharf has been adopted not only for the commercial development on the Estate itself, but also for transport links to the area — there is presently a Canary Wharf station on the Jubilee Line and on the Docklands Light Railway, and a Canary Wharf Crosslink station is being built. It is also the name of a political ward, part of Tower Hamlets, which comprises both the Estate itself and its surrounding area.
The law
The guiding principles to be applied in relation to a s3(1)(c) objection, and specifically one relating to geographical names, are set out in the decision of the CJEU in Windsurfing Chiemsee Produktions v Huber [1999] ETMR 585 [joined cases C-108/97 and C-109/97]. The context of the questions asked by the Munich Landgericht in that case was the registration by the Claimant of marks for sportswear including the name CHIEMSEE, a lake in Bavaria popular with tourists and apparently used for surfing. The answers given by the CJEU were as follows [paragraph 37]:
'Article 3(1)(c) is to be interpreted as meaning that:
• It does not prohibit the registration of geographical names as trade marks solely where the names designate places which are in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods
• Where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods
• In making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned
• It is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it'
Other paragraphs of the judgment in Windsurfing Chiemsee which may be regarded as giving useful guidance are as follows:
(a) Paragraphs 25–26:
'25…Article 3(1)(c) of the Directive pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the categories of goods or services in relation to which registration is applied for may be freely used by all, including as collective marks or as part of complex or graphic marks. Article 3(1)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks
26. As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response.'
(b) Paragraph 33:
33…Article 3(1)(c) of the Directive does...
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