This article was published by the French office of the firm - Jacobacci Avocats
Confronted with fierce competition resulting from the multiplication of physical and, above all, online competitors, most brands have become aware that an aesthetic and strongly recognizable retail design is a powerful tool and should not be neglected.
The growing attention paid to retail design is a global trend, since shop design is becoming, now more than ever, an essential asset for economic players.
As a part of the visual identity of a brand, the layout and visual effect of a store are particularly important since they have a direct impact on the customer’s physical shopping experience: whether the customer is interacting with spectacular and unique flagship stores or typical, familiar stores that aim to ensure a good consumer experience across multiple locations of a single brand, the design and the layout of points of sale are key elements of commercial attractiveness.
Different legal tools can be implemented to protect these retail designs and layouts against imitation by indelicate competitors, either per se or for their contribution to the economic competitiveness of a business.
1. The protection of the design of a point of sale as such:
Firstly, when a layout or display is the result of a creative process involving arbitrary, original and not-exclusively-functional choices, it is eligible for the protection of rights of authorship.
For this purpose, the layout has to be the result of creative choices that reflect the personality of the author, and must therefore not be limited to the mere juxtaposition of functional items.
In such cases, French Courts have found that the definite and original combination of features composing the shop layout or display stand could be protected against unauthorized copies on the grounds of author rights (for instance, CA Paris, 30.06.2015, n°14/05098 and TGI Paris, 18.09.2015, n°2014/02358 for stands; CA Paris, 08.02.2002, n°2000/07582 and CA Douai, 16.03.2017, n°15/03286 for shop layouts).
In any event, before claiming protection for rights of authorship, the company must ensure that it is the legitimate owner of such rights, and preferably have written proof of the transfer of rights, or authorization of use, from the design agency or by the employee that created the design.
The appearance of a shop can also possibly be registered as a national or community design when it is new and has an individual character.
Even though some commentators consider that designs should only cover “products”, strictly speaking, the wide definition given by Article L.511-1 of the Intellectual Property Code (and the equivalent provision of European Union Regulation n°6/2002) – citing “any industrial or handicraft item” and including several trade dress components such as packaging and presentations – does not appear incompatible with the protection of a store’s look.
Although this possibility has remained largely unexplored until now, the Court of Appeal of Paris has nevertheless had the opportunity to rule that this definition of a registrable design was applicable to a shop layout, provided it was perceptible, identifiable and identified (CA Paris, 23.05.2008, n°06/18874).
Both rights of authorship and design registrations should therefore be considered for the protection of a new and original shop layout, as such.
2. The protection of the design of a sale point as a competitive asset:
The layout and design of a retail point can also be protected for their role in the identification of a company for the consumers and, accordingly, the imitation of the characteristic features of the shop by a third party may generate a risk of confusion for the clientele.
The registration of the layout as a trademark should be a first way to protect a company’s points of sale, when their layout and design are – per se or thanks to broad use – distinctive for the consumers, and can therefore function as an identification of origin for the products of that economic player.
The European Union Court of Justice confirmed in a 2014 ruling concerning the layout of the Apple stores (C-421/13) that a 2D or 3D figurative sign composed of the appearance of a shop’s layout and design could potentially be registered as a trademark, thus allowing possible infringement actions against competitors that would sell similar or identical products or services within an analogous commercial layout on the covered territory.
Even without a trademark registration, the reproduction of the layout and design of a competitor’s point of sale can provoke confusion that may mislead the consumer, or at least an association in its mind, in such a manner as to unduly benefit the copier.
Such a copy can therefore be deemed wrongful behavior that beaches the fair uses of trade and results in prejudice for the imitated economic player, thus amounting to unfair competition punishable on the grounds of civil liability.
Last but not least, copying the layout of a competitor can be a way to ride on its coat-tails, by benefitting from its success without having to undertake the necessary brainstorming, effort, work and investments.
Finally, taking such an undue advantage from a competitor can also be qualified as wrongful prejudicial behavior that can be sanctioned as parasitism by French jurisdictions.
Since a shop layout is an essential feature for ensuring a positive consumer experience and improving a brand’s attractiveness, the most effective layouts are vulnerable to misappropriation and, essentially, copycats are likely to spread rapidly.
It is therefore important to carefully think through shop designs and the means of protecting those that are original and/or distinctive, and in particular to:
- Ensure that said design is used in a recurring manner in most – if not all – the points of sale of the brand, with as little variation between them as possible;
- Make the characteristic layout stand out and ensure its good public recognition and association with the brand;
- Have the means to prove with certainty the first date of disclosure and the use of the claimed layout.
A shop layout that is original and conveys a strong brand identity will thus have all the winning cards to enjoy protection on either one or several of the above-mentioned grounds and hence maintain its uniqueness and distinctiveness on the market.