Should London's Olympics be a trigger for trade marks on buildings?

Out-Law Analysis | 21 Jan 2011 | 11:58 am | 3 min. read

OPINION: Next year's London Olympics will transform the London skyline with new landmark structures that will be a lasting reminder of the event. But should the buildings' owners and designers be making sure that others don't profit from their work?

There is a straightforward way to do this that may not have occurred to them yet – to apply for trade marks in respect of the buildings.

We think of trade marks as mechanisms to protect logos, product names, major brands. But they can offer protection to all sorts of things, including buildings.

Do you want to make sure your new multi-million pound flagship building is seen at its best? Do you want to stamp out fake souvenirs? Or control legitimate souvenirs and earn money from licensng your rights? Trade marking the name or image of your building could be the answer.

So what kinds of buildings can have their own trade mark? The more iconic and distinctive the building, the more powerful and easily enforceable trade mark rights will be. You can trade mark a building's name and its shape.

For example, Antony Gormley has trade mark protection for both the name and image of his famous Angel of the North. This is a protection that we believe is under-used in the UK. And it can bring very real benefits.

The owner or designer of a trade mark-protected building has a better chance of protecting the brand value of a building and the investment it has made in creating an interesting and iconic, rather than mundane structure, and this is something that is becoming increasingly important.

Famously, the building of the distinctive Guggenheim modern art museum in the Spanish city Bilbao triggered an economic regeneration that caught the eye of city authorities everywhere. Cities now compete to have big name architects design eye-catching buildings that they hope will put their cities on the map, culturally and economically.

These buildings are assets that developers and owners have invested tens or even hundreds of millions of pounds in, and  it makes sense to protect as many aspects of them as possible.

A trade mark applies to the kinds of business in which you register it – furniture, say, or clothes. It stops others using your distinctive material, giving consumers the peace of mind to know that certain signs mean that they are dealing with your company.

When applied to a building, a trade mark will allow you to take action against anyone who uses the trade marked name or image of your building in the course of their business, as long as they operate in the area of business for which you registered the trade mark.

These could be the makers of souvenirs, say keyrings, toys, fridge magnets or posters featuring your building.

This kind of activity can be hard to stop without a trade mark. With one, you could demand that it cease altogether or you could grant official licences for the use of images or versions of your building, both generating revenue and allowing you to control such use and ensure that souvenirs are of good quality.

Who gets to register the trade mark rights is up for negotiation. The architect or designer of a building or monument might want to reserve those rights, or they might be agreed to be owned by the company or organisation funding the project or owning the building. This should certainly be clarified when drawing up a contract for the design of a building.

The protection is not total, though. Whilst registering a distinctive name, such as The London Eye, is straightforward, registering a trade mark representation of the building's shape is more difficult. The building will have to be very distinctive in shape to merit this, and enforcement will be complicated.

A trade mark showing a representation of a building or monument protects only that exact image of the building  - for example the distinctive front elevation of The Angel of the North. . If a photographer sells a picture of the building from a different angle showing different parts of it, the trade mark will not offer protection.

The process is not ideal for older buildings, either. A decision by the German trade mark authority said this week that a 2005 trade mark for Neuschwanstein castle, the famous castle in Bavaria which was the inspiration for Disney's Sleeping Beauty's castle - was not valid because the structure had existed for over 100 years and the name and image had effectively become public property by the time the trade mark was registered.

The same is likely to be true for London's great landmarks, but for newly built structures, such as the ArcelorMittal Orbit which will be an iconic feature of the Olympic Park, trade mark protection could give owners and designers a new kind of control.

By Louise Fullwood, a trade mark specialist and Katy Adams, a trademark attorney at Pinsent Masons, the law firm behind OUT-LAW.COM