Trademarks may be registered for ‘shopping centre services’
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In Land Securities plc v Registrar of Trademarks ( EWHC 1744 (Pat), July 25 2008), the Chancery Division of the High Court of England and Wales has held that the services provided by shopping centres may be the subject of trademark protection.
The decision was issued in respect of three joined cases, which were heard together in order to determine the question of whether the operator of a shopping centre could register a trademark for the services that it might provide. The trademarks at issue were WHITE ROSE, VICTORIA CENTRE and EDEN QUARTER. In each case, an application was made by a shopping centre operator and registration was refused by the registrar of trademarks.
The applicants collectively maintained that although shopping centre operators did not generally retail goods to the public, they offered a number of services, including:
- selecting an attractive location with good transport links;
- providing a well-designed building or group of buildings, with a suitable layout;
- selecting and attracting a suitable mix of retail outlets;
- selecting and attracting a suitable mix of other facilities;
- providing an attractive and comfortable ambience;
- providing facilities such as car parks, toilets and crèches;
- providing convenient opening hours;
- providing information and assistance to customers;
- providing specialist assistance, such as language assistance and facilities for the disabled; and
- providing loyalty schemes of various kinds.
In support of the applications, evidence was furnished that shopping centres made extensive use of branding – for example, they undertake advertising, publish magazines and issue loyalty cards. However, the registrar held that:
- the services specified in the applications were not services within the meaning of the First Trademarks Directive (89/104/EEC); and
- the specifications of the services lacked the requisite degree of clarity.
The court allowed the applicants' appeals, holding as follows:
- The word ‘services’ within the meaning of Article 50 of the EC Treaty meant services which are of the kind that are "normally provided for remuneration". However, the definition of ‘remuneration’ did not have to be a narrow one, relating to income that was separately itemized on separate invoices. Thus, it could include the services of a shopping centre operator, which carries on activities of "a commercial character". Moreover, in principle there was no reason why a shopping centre operator could not be said to be providing services.
- One would not expect the trademark legislation to afford protection to activities which are wholly altruistic. Although a shopping centre operator might be remunerated in a way that is directly related to the custom which it attracts, its services are not provided in a purely disinterested fashion.
- In each of the three cases, the applicants have been providing services.
- The applications should be remitted so that the specification of goods and services may be properly designated.
The court also held that no reference to the European Court of Justice (ECJ) for a preliminary ruling was needed, since necessary principles could be extrapolated from the ECJ’s ruling in Praktiker Bau- und Heimwerkermärkte AG (Case C-418/02, July 7 2005), where the applicant was a provider of retail services (rather than, as here, a shopping centre operator).
Jeremy Phillips, IP consultant to Olswang, London
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