A storm in a teashop

By Brand Heeler

Can buildings acquire IP? No, we haven’t already covered this. But we do like a nice cup of tea

Many buildings are famous in their own right, whether because of their size, shape, history, location or whatever. Others become famous because of well-known occupants. Sometimes occupants and premises become synonymous and that can lead to problems if they later part company. Consider the following. The Willow Tea Rooms is a small business operating two cafes in Glasgow. Actually, The Willow Tea Rooms is a famous building in Sauchiehall Street, designed by Charles Rennie Mackintosh in the Art Nouveau style.

To Scottish aficionados of high tea, either or both of these statements might be true, depending on how they choose to unpick a somewhat tangled history of seminal architecture, local entrepreneurship and Earl Grey. But, from a branding point of view, only one can really be correct and the UK Intellectual Property Office (UKIPO) has recently had to decide which. The original Willow Tea Rooms premises at 217 Sauchiehall Street were designed by Mackintosh in 1903 for Kate Cranston, already famous for her city-wide chain of tea rooms. Although Mackintosh had previously worked with Cranston on other tearooms, this was the first time he had been responsible for both the external architecture and interior design (including furniture and internal layout).

In 1919 Ms Cranston sold up her business and various premises, each of which passed through a variety of proprietors and purposes until another local businesswoman, Anne Mulhern, reopened a tearoom business in the old Mackintosh premises in 1983. The new business quickly became a huge success and, in due course, Ms Mulhern applied to register WILLOW and THE WILLOW TEAROOMS as trade marks. Over time, the building began to deteriorate and Ms Mulhern relocated nearby (coincidentally next door to the former site of one of Cranston’s other tearooms). She also opened a concession in Watt Bros’ department store, and 217 Sauchiehall Street was acquired by the Willow Tea Rooms Trust with a view to refurbishment and relaunch. At this point, the Trust also attempted to register its own trade mark: THE WILLOW TEA ROOMS.

Mulhern opposed the Trust’s application on the basis of her existing trade marks and goodwill, claiming that THE WILLOW TEA ROOMS would be seen as a reference to her business rather than to the building which had once housed one branch of it. The Trust retorted that any goodwill in the WILLOW TEA ROOMS should be associated with the building itself rather than any business based there. The UKIPO sought guidance from case law dating back to 1901 (and thus, we note with satisfaction, older even than the Mackintosh designs at the heart of this dispute!) before holding that, legally speaking, ‘goodwill’ can only exist in connection with a trade or business, being different from ‘reputation’ whose existence is a matter of fact. Goodwill presupposes reputation but the converse is not true. As such, the Trust could not claim goodwill on the basis of the architectural reputation of the building, however renowned it may be, and so its trade mark application was refused.

We are aware that it’s now very common (and very sensible) for landlords to anticipate this very problem by specifically protecting a building’s brand. There are numerous trade mark registrations for THE SHARD, THE GHERKIN etc and every other development in London seems desperate to acquire a similar nickname of its own. Sometimes a building’s old name persists in the public memory despite a rebrand – the NatWest Tower in London is now more correctly TOWER 42, and our favourite indoor putt-putt course in the UK is housed the iconic Renault Building, now quite rightly Grade II listed, although rechristened the ‘Spectrum Building’ – in which case the landlord now has two lots of brands to protect. What a lovely problem to have!

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.