Putting your mark on the map

Posted on 30 January 2019 by Nina O'Sullivan and Sarah Brooks

Putting your mark on the map

Choosing the name of any new development is a critical part of the process of creating its brand identity. Where possible, development names should be registered as a trade mark. A registration is a valuable business asset (it can be easily enforced against unauthorised or confusingly similar uses) and it can be bought, sold, licensed or used as security to support a loan.

A trade mark acts as a badge of origin, distinguishing the goods and services offered by one business from those of another. However, naming a new development after the place where it is situated is likely to make protecting the name through registration more difficult as UK and EU trade mark laws prevent registration of trade marks that consist exclusively of signs which designate well known places, or which are well known for particular products and services which emanate from that place. So, a name such as 'Ben Nevis' would not be registrable for leisure and sporting activities, and 'Cromer' would likely to be objectionable for seafood, given the Norfolk town's association with Cromer crabs.

There have been a number of unsuccessful attempts to secure trade mark registrations for place names from which a number of lessons can be learned. Canary Wharf Group (CWG) was unable to secure a trade mark registration for CANARY WHARF as its argument that consumers would understand that it referred to a private estate with a monopoly over a range of services, rather than as the place name for a well-known business district, was rejected.  A more recent example is the unsuccessful bid by St Andrew's Links Ltd to protect ST ANDREWS as an EU trade mark for a range of services from "arranging and conducting entertainment conferences" to "publication of books, electronic books and journals on-line". The General Court said that consumers would see these services branded under the ST ANDREWS sign as relating to golf and/or originating from St Andrews the place Case T-791/17 St. Andrews Links Ltd v EUIPO. Interestingly, the mark was allowed for goods and services related to clothing, games and playthings on the basis that, whilst St Andrews is a town known for golf courses, it is not necessarily known for making or selling clothing, footwear, headgear, games and playthings.

However, there is not an absolute uniform ban against registering place names and examples of UK trade mark registrations which have been secured include: BAKER STREET (for soap), BATTERSEA POWER STATION for a range of services ranging from transport to accommodation services and BELGRAVIA for a range of products and services ranging from computer software to television and film production services.

When examining trade marks for place names, the UK and EU trade mark registries will consider in particular the size of the geographical area and its reputation. A trade mark application for Newcastle in relation to 'hairdressing services' is unlikely to be accepted, given that every town is likely to offer these services (and therefore the mark is not distinctive), whereas a trade mark application for Newcastle for 'coffee' may have a better chance of being accepted, given that Newcastle, for example, does not have a reputation for coffee production. Place names which designate overseas locations will face the same criteria as UK place names  but it may be easier to secure a trade mark registration for a small or medium sized location town in, say, the Ukraine then the name of a similar sized place in the UK for the same product or service.  

Whilst it is difficult to secure a registration for a place name, the chances of securing a registration can be improved by seeking to register the name of the place, alongside a distinctive logo. This was the case in relation to Canary Wharf, where they were successful in registering a logo accompanying the words CANARY WHARF.

It is also important to apply for brand protection, including for place names, early with new developments, and to seek to secure a registration before the name becomes commonly used. Once a trade mark registration is secured it should also be used in relation to the relevant goods and services, so as not to be at risk of an attack for non-use five years after registration.

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