Decision Nº O/423/14 from Intellectual Property Office - (Trade market), 1 October 2014

JudgeMr E S Smith
Registration NumberUK00002655156
Administrative Decision NumberO/423/14
Date01 October 2014
CourtIntellectual Property Office (United Kingdom)
O-423-14
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NUMBER 2655156
BY CANARY WHARF GROUP PLC
TO REGISTER THE FOLLOWING TRADE MARK
IN CLASSES 16, 36, 37 AND 39:
CANARY WHARF
2
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NUMBER 2655156
BY CANARY WHARF GROUP PLC
TO REGISTER THE FOLLOWING TRADE MARK
IN CLASSES 16, 36, 37 AND 39:
CANARY WHARF
Background
1. On 6 March 2013, Canary Wharf Group Plc (‘CWG’ or ‘the applicant’) applied for
registration of the sign ‘Canary Wharf’ in respect of 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.
2. The application faced initial objection under sections 3(1)(b) and (c) of the UK Trade
Marks Act 1994 (‘the Act’) on the basis that the words ‘Canary Wharf’ may serve in trade to
designate the geographic origin and geographic focus of the services e.g. any services
provided from the Canary Wharf area, or focusing on that area.
3. The objection was supported by a reference taken from ‘A Dictionary of London Place
Names (2nd edition) A D Mills, Oxford University Press 2010, which states the following:

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