On Your Marks: New government guidance affects trademarks
Published: 20 July, 2009
A re-think of trade mark laws brought in last year meant that shopping centres were, for the first time, able to protect their brands. But while it’s now possible to gain trade mark protection, there are still stringent guidelines to which shopping centres must adhere if applications are to be successful, writes Cynthia Johnson.
The Intellectual Property Office (IPO) has issued some guidance on what the changes mean in practice, clarifying what is expected from trade mark applications.
It’s important to take note of the guidance, since trade marks distinguish goods and services in the marketplace. Once a trade mark is registered, it cannot be used by anybody other than the holder without permission. Importantly, however, this protection only extends to limited classes of goods or services. This is established at the outset when the applicant specifies the goods or services to which the registration will relate. A good example is the trade mark for the word “polo” which is registered as a trade mark by Nestlé in Class 30 (foodstuffs), by Volkswagen in Class 12 (vehicles) and by Ralph Lauren in Class 25 (clothing).
It has been possible to register trade marks in connection with the provision of services, as well as goods, for the last 15 years. Shopping centre operators clearly provide services that are useful to the consumer. They spend time, money and effort developing and improving shopping centres and often provide infrastructure, such as car parks and crèches, and co-ordinating opening hours and promotional activities.
Surprisingly, the Registrar of Trade Marks took the view that shopping centre operators did not offer a service in the context of trade mark applications, making it impossible for shopping centre operators to seek trade mark protection. This approach was successfully challenged last year by Land Securities, Capital Shopping Centres and Hammerson. The High Court ruled that operators of shopping centres should be able to register trade marks for the services they provide. The definition of those services must, however, be clear and specific enough to support the application.
Developing strong branding for shopping centres is clearly important, since it helps generate increased sales and encourage consumer loyalty. To these ends, shopping centre operators are advertising their centres and issuing customer reward cards that can be used across stores. These efforts utilise logos and slogans to create a recognisable brand.
The decision of the High Court is therefore good news for shopping centre operators. If it was impossible to register slogans/logos used by retail shopping centres then carefully established brands would go largely unprotected. Operators would have far less control over how their trade marks are used. Competitors could “free ride” on the reputation of trade marks. The legal protections for unregistered trade marks are far less effective than those available to holders of registered trade marks.
The IPO adopts the High Court’s approach and recognises that it will, in principle, accept future trade mark applications by shopping centre operators. The guidance from the IPO strongly advises that the specification of services must be clear, and the IPO endorses model specifications set out in the guidance, stating that an open-ended reference to “all other services” is insufficiently clear and will not be accepted. It is therefore important that all related services are clearly defined, rather than simply grouped together as ‘related services’ or something similar.
The IPO also recognises that applications in relation to internet-based “virtual shopping malls” can also be submitted for trade mark protection. However, the Registrar will not necessarily accept the specification unless there is specific reference to the bringing together of retailers and services “in a shopping centre or mall” or, in the case of internet retail, “through a virtual mall”. If the service is provided through any other means, the Registrar will adopt a case-by case-approach. Although some unanswered questions remain, shopping centre operators will undoubtedly benefit from this useful guidance in a complex area.
Cynthia Johnson is senior associate at UK law firm Dundas & Wilson.
