Branded real estate in the industrial, commercial and residential markets is big business. The brand adopted can influence perception and price.
It is no surprise then that developers are increasingly taking steps to protect these brands by registering them as trade marks. We recently discussed some legal developments for these kinds of brands (including shopping centres) here.
An even more recent UK decision provides a fairly extreme example of how timing can be of the essence in protecting these valuable brands.
The Canary Wharf case
Canary Wharf Group plc applied to register CANARY WHARF as a trade mark in the UK in respect of a variety of goods and services including property development and maintenance services, car parking services, and building and landscape design services.
The mark was considered objectionable on the basis that Canary Wharf is a place name. This was supported by reference to “A Dictionary of London Place Names (2nd Edition)” (OUP 2010).
CWG sought to characterise CANARY WHARF as the name of a private building development, rather than a place name. The estate existed only through the efforts of CWG and its predecessor, and the name was analogous to that of a landmark building or other construction such as the Shard, the London Eye and the Westfield and Bluewater shopping developments, and Brisbane’s Q1 tower (the subject of a recent Federal Court decision).
The Hearing Officer strongly disagreed with CWG’s submissions.
“In the Canary Wharf area there are currently 35 buildings, as well as transport links, air above, and soil – albeit reclaimed – underneath. Potentially there will be hundreds more buildings if the area expands into predominantly residential land, as is currently anticipated. The applicant concedes that, in fact, it does not currently own the freehold to a proportion of those existing buildings, including stations. It is not clear whether it will own the freehold to the residential property intended to be acquired or built. This is patently not, in my view, ‘BATTERSEA POWER STATION’ or the ‘Q1’ tower, both of which may be said to have blessed with rather more simplistic mechanics of ownership and/or control.”
A key point, was the significance of the filing date (the date of the assessment under UK law):
“ … it is very significant in this case that the applicant did not file the application prior to, or shortly after, the development had been started or named, but instead, has waited almost 30 years after the term was first in use. 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”.
The application was rejected (though that decision may be appealed).
The take home – protect your property brand early
The lesson here is clear: you can avoid the legal argument altogether by clearing and filing for your property brand at the time that you develop it, or at least prior to any pre-sales or marketing.
The strategy should also consider defensive domain name registrations.
If you would like further information on this topic or would like to discuss this with one of our trade mark experts, please contact us.