Australia: UK branding dispute highlights how trade marks can be an important tool for property owners

In a previous article, we discussed the matter of Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 and how trade mark registrations can be used to protect building names. This article broadly revisits that topic, taking a brief look at a recent UK trade marks dispute and its local relevance.

The recent branding dispute between Battersea Project Land Company (BPLC), a company redeveloping the Battersea Power Station site and Urban Lettings, a London based real estate agency, has been the subject of media attention lately. The dispute serves to remind property owners of the value in carefully considering how to protect the identities of their properties and associated brands.

Battersea Power Station is a decommissioned coal-fired power station located in South London that was built in the 1930s and is perhaps most famous for its iconic four brick chimneys that feature on the cover of English rock band Pink Floyd's 1977 Animals album.

BPLC, the registered owner of a UK trade mark registration for BATTERSEA POWER STATION sent a letter to Urban Lettings demanding that Urban Lettings remove the silhouette of Battersea Power Station from its company masthead.

BPLC contended that Urban Lettings' use of the silhouette of Battersea Power Station in its company logo constituted a misrepresentation that Urban Lettings was associated with or otherwise connected to BPLC, which it is not. According to the reports, Urban Lettings seems to be resigned to acceding to BPLC's demands and has indicated that it will be re-branding minus the Battersea Power Station silhouette.

The circumstances of the dispute should prompt property owners to carefully consider what protection may be available to safeguard the identity of their properties from third parties that may seek to capitalise on recognition without authorisation.

In Australia, a trade mark is defined as a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Signs can include any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

This means that property owners may be able to obtain protection for the name, image, logo, silhouette or shape of their property, or feature part thereof, provided the trade mark applied for meets the requirements for registration under the Trade Marks Act. It is worth noting that the Sydney Opera House Trust is the registered owner of a number of trade marks that protect the name and image of the iconic Sydney Opera House.

If the circumstances of the UK situation were applied in Australia, the Australian Consumer Law would likely provide some protection against misleading conduct. However, if a property owner also owned trade mark registrations for the name, image, logo, silhouette or shape of their property, they would be in a better position.

It is always worthwhile considering what is really valuable: is it the name, or a particular image associated with the property?

As the name, logo, image, silhouette and even shape of a building or property may be able to be protected as a trade mark, property owners should consider whether they ought to seek such protection in their particular circumstances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.