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Trade mark protection for shopping centres

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Released 24 October 2008

The High Court has overturned the UK IPO's previous decision to refuse to allow the names of shopping centres to be registered as trade marks in class 35.

The appeals, who were brought by Land Securities plc, Capital Shopping Centres plc and Hammerson plc against the Registrar of Trade Marks and concerned the following specification:

The bringing together for the benefit of others, of a variety of retail outlets, entertainment, restaurant and other services, enabling customers to conveniently view and purchase goods and services and make use of such facilities in a shopping centre or mall;

the bringing together for the benefit of others, of a variety of retail outlets connected with one or more of the following types of goods, namely, beauty products, toiletries, health and healthcare equipment, pet products, machines for household use, hand tools, gardening tools and accessories, optical goods, cameras, domestic electrical and electronic equipment, including white goods, jewellery, clocks, watches, musical instruments, stationery, publications, artists' materials, CDs, DVDs, leather goods, luggage, travel accessories, furniture, household utensils, furnishings, textiles, footwear, headwear, haberdashery, toys and games, sports equipment and tobacco products, entertainment, restaurant and other services, enabling customers to conveniently view and purchase goods and services and make use of such facilities in a shopping centre or mall;

the bringing together, for the benefit of others, via the Internet, of a variety of beauty products, toiletries, health and healthcare equipment, pet products, machines for household use, hand tools, gardening tools and accessories, optical goods, cameras, domestic electrical and electronic equipment, including white goods, jewellery, clocks, watches, musical instruments, stationery, publications, artists' materials, CDs, DVDs, leather goods, luggage, travel accessories, furniture, household utensils, furnishings, textiles, footwear, headwear, haberdashery, toys and games, sports equipment and tobacco products, financial services and telecommunications services through a virtual shopping mall, enabling customers to conveniently view and purchase those goods and services by means of telecommunications.

Mr Justice Floyd stated that "it is clear that shopping centres make extensive use of branding. For example they undertake advertising for their centres, publish magazines and issue loyalty cards."

He continued "Consumers have a choice as to the shopping centre to which they will go and at which they will spend their money, and they will distinguish between them by use of the shopping centre's brand. The "transaction" which the shopping centre is encouraging by use of its mark is not so much the conclusion of any individual transaction with one retailer in its stores as opposed to another, but the conclusion of transactions within its shopping centre as opposed to that of its rival shopping centres. In order to encourage that transaction the shopping centre operator does all he can to make the shopping centre as a whole an attractive place for the consumer to come and spend money. In that manner the operator generates a goodwill associated with the name or mark under which the shopping centre trades. To that extent, the shopping centre operator is providing services. To that extent also, the trade mark of the shopping centre is fulfilling its essential function, that is to say it is distinguishing the services of one undertaking from those of another and guaranteeing the origin of services to which the mark is applied."

The Court relied upon the ECJ's decision in Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873, which related to retail services, finding that there was no reason in principle why a shopping centre could not be said to be providing retail services and building goodwill in its brand.

Corinne Day is a trainee solicitor who specialises in intellectual property law.


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2008-10-25 00:19:43 in Legal Articles

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