Recent acceptance by the US Patent and Trademark Office of trademark applications by Apple Inc. relating in some detail to a combination of the interior features of their retail stores (e.g. use and disposition of glass, and the nature and disposition of shelving, video screens and tables - see US Regns. Nos. 4277913/4) illustrates the increasing importance of the visual effect of marketing and what is called 'trade dress'.  This refers to the overall image, get-up or recognisable distinguishing features of a product or service.

This is not the first time the concept has been used.  The USA has always been quite forward in this respect.  US Trademark law allows registration of trade dress provided it is distinctive, non-functional and clearly defined.  Evidence of distinctiveness is likely to have to be provided to show 'secondary meaning' if the inherent level of distinctiveness is not high.  The Apple US marks were registered on the basis of evidence of use since 2006. 

However, US law goes further in allowing (via Section 43a of the Lanham Act) the owner of an unregistered trade dress to sue a third party  ".......who, on or in connection with any goods or services..........uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive....... as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities".  This has successfully been used several times in the USA, the best known resulting from a US Supreme Court judgment  (Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763 (1992)) regarding the appearance and décor of a chain of Mexican-style restaurants. 

Under UK and Community Trademark jurisdictions the situation has not been as straightforward.  Whilst trademark registrations for marks involving the use of colour and design can be obtained and registrations for the use of particular colour(s) applied to retail environments have been granted, the level of distinctiveness now required is quite high.  However, such marks have been registered and successfully used in infringement proceedings. 

In 1995 BP obtained registrations in the UK in each of classes 4 and 37 for, inter alia, fuels, lubricants and retail petrol station services, the mark being a recently adopted shade of green disposed on surfaces in a particular way as shown in a representation of a petrol filling station (see e.g UK No. 1469513).  The idea was to provide a uniform corporate identity that would allow a motorist to spot BP's filling stations from a distance.  When a local company in Northern Ireland later started adopting a similar type of livery for their filling stations (arguing that green was a colour associated with both care for the environment and Irishness), BP sued them for both trademark infringement and passing off.  They failed on both counts at first instance but the Court of Appeal in Northern Ireland decided that the marks were valid and enforceable and that trademark infringement had occurred (BP Amoco plc v John Kelly Ltd [2002] F.S.R.5).  Relief was granted.

Passing off in that case was not considered to have occurred though, since there was no evidence that any customer would be deceived into making a purchase thinking he would be buying BP petrol.  The Court felt that a customer in that case would notice when he got close to one of the Irish Company's stations that the products would not be BP's. This illustrates that the tests for passing off and trademark infringement differ, and that mere likelihood of confusion, which is sufficient to succeed in a trademark infringement action, is not enough to succeed in a passing off case.

A common thread on both sides of the Atlantic is that whilst the use of colour and design alone by a trader in a particular way can give rise to an enforceable right, the burden of proof of distinctiveness or secondary meaning is high.  A distinction also has to be made between applications in which the features of colour and design are an adjunct to the product or service, such as packaging or the get-up of retail outlets, and applications which seek to protect features of colour and design in the product itself - as in e.g. the numerous dishwasher tablet.cases at OHIM - for which additional legal considerations come into play. 

In the absence of a distinctive trading name or logo, relatively few applications to register marks relating to colour, design and trade dress succeed, failure being usually either for lack of distinctiveness, whether inherent or acquired, precision in description, or both.  For an application in respect of the interior design common to a chain of retail outlets, it is important that the overall design has an individuality or uniqueness that renders the outlets distinguishable from others, such that the public link them to a particular product or service.