Introduction

With the advent of technology, non-conventional marks have come to the fore. Besides the colour, sound, shape and smell marks, protection is also provided for motion, hologram, fluid, texture marks as well as store layout marks and architectural marks, amongst others. Due to the paradigm shift in the way consumers shop, protection of store layout is gaining prominence since retail is not just restricted to selling products, but also involves providing an entire shopping experience to them. From the moment one enters into a store, the brands aim to provide an exclusive and customised environment, ranging from their trademarked products to the look of the walls and even the arrangement, shape, colour and size of the shelves! This is in fact self-serving since it facilitates brand recognition and provides good recall value for the brand. Moreover, such brand recall value facilitates licensing by brands for monetizing purpose.

Store Layout marks are different from marks registered for famous buildings such as the registration of the dome and exterior of the Taj Mahal Palace Hotel, BSE Building, Sydney Opera House, Empire State Building, Eiffel Tower, etc. since these marks protect the exterior image of the building whereas store layouts protect the interior of stores such as the placements, arrangements, colours, shapes amongst others.

The history of granting protection to Store layouts dates back to the case of Two Pesos v. Taco Cabana[1], wherein trade dress protection was granted by the US Supreme Court to the operator of a chain of Mexican fast food restaurants under Section 43(a) of the Trademark Act of 1946 (Lanham Act) for the distinctive decor and the open kitchen layout. In this case, the District Court instructed the jury: "'Trade dress' is the total image of the business. Taco Cabana's trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers' uniforms and other features reflecting on the total image of the restaurant." In this article, we will aim to study some of the ways in which Store layouts have been protected in India and abroad.

Protection granted abroad

In 2010, Apple had filed three applications for its store layout designs which were registered by the USPTO, wherein Apple had claimed rights on the arrangement of tables, shape of the lighting units, colours pertaining to the layout amongst others. Further, in 2009, Stuart Weitzman had filed an application and was able to register its mark “” which consists of a 3D trade dress of the interior design of a retail store.[2] Importantly, not only do protection of store layouts build consumer recognition, they also provide a recourse for undue copying by third parties. A suit to this effect was filed by Yves Saint Laurent against Zadig & Voltaire for allegedly copying the interior design of two of its stores in Paris.[3] Recently, in Kiko v Wycon, Kiko Milano had alleged that Wycon had copied its store design pertaining to colour scheme, layout and spacing, decoration and product placement, as well as other aspects relating to the feel of the shop[4]. The recent ruling in this regard by the Italian Supreme Court has upheld the decision of the Court of Appeal of Milan that the layout of the KIKO stores is entitled to be protected under the Italian Copyright Act as an architectural plan and, WYCON was liable for copyright infringement.

Protection in India

In India, several trademark applications have been filed for protection of store layouts and details of a few have been provided below:

  • MARY COHR Store Layout, “” which has been registered as a device mark and comprises design and layout of a retail store for beauty salon services (amongst others) in Class 44.[5]
  • GODREJ & BOYCE’s Layout of the Material Library Zone in a store, “” which has been registered as a device mark and comprises design and layout of a particular zone in a store providing retail services (amongst others) in Classes 35 and 42.[6]
  • GODREJ & BOYCE’s Layout of the Discussion Area Zone in a store “” which has been registered as a device mark and comprises design and layout of a particular zone in a store providing retail services (amongst others) in Classes 35 and 42.[7]
  • GODREJ & BOYCE’s Layout of the Color Visualizer Zone in a store “” which has been registered as a device mark and comprises design and layout of a particular zone in a store providing retail services (amongst others) in Classes 35 and 42.[8]
  • KIKO’s mark “” which has been granted protection as a device mark and consists of a configuration of an entrance of a store characterized by a rectangular frame and two side panels sustained by a support and partially projecting within the frame in Class 35.[9]
  • MARY COHR interior of a beauty salon Layout , “” which has been published as a device mark and comprises design and layout of interior of a beauty salon of MARY COHR for beauty salon services (amongst others) in Class 44.[10]
  • Layout of 'The Vedic' restaurant, “” which was initially applied as a 3D mark but subsequent to an objection from the Examiner was changed to a device mark and consists of trade dress for the distinctive appearance and design of the interior of a restaurant for restaurant services (amongst others) in Class 43.[11]
  • GUINOT interior of a beauty salon Layout, “” which has been applied as a device mark and comprises design and layout of interior of a beauty salon of GUINOT for beauty salon services (amongst others) in Class 44.[12]

Distinctiveness criteria

In India, despite there being no explicit provision for the same, non-conventional marks are recognised under the provisions of Section 2(1)(m)[13] and Section 2(1)(zb)[14] of the Trade Marks Act 1999. The requirement under Section 2(1)(zb) that a trademark should be “capable of being represented graphically” and should be able to distinguish “the goods or services of one person from those of others” extends to non-conventional marks as well. In this regard, most of the applications mentioned above were initially objected on the ground that they lack distinctiveness and are thus incapable of distinguishing the goods or services of the Applicants from those of others. To prove source identification of a store layout mark, reliance is consistently placed on the landmark judgement of the CJEU in the case of Apple v. Deutsches Patent- und Markenamt (Case C-421/13) wherein the Court observed that the features of the store layout were sufficiently distinguishable from the others and thus, the store layout should be protected in Germany after registration as a 3D mark in the USA. Thus, a 3D representation of retail store layout was registered as a trademark on the basis of the pictorial representation and the accompanying detailed word-description. Further, the said objection can also be overcome on the grounds if the mark has acquired distinctiveness or is well-known amongst the relevant public and is associated with the Applicant itself.

Conclusion

Protection of Store layout is particularly significant now since owing to the pandemic, brands will have to go the additional mile in providing unique experiences for customers in order to drive traffic. Thus, protection of store layouts helps in maintaining exclusivity for brands, is lucrative since it encourages licensing and hinders unscrupulous use by third parties. Recognising the importance of the same, there has been an upsurge of filings for protection of Store layout and Indian Trade Mark Office has been granting protection to the same in case the distinctive criteria is met. Thus, even though the notion of protecting store layout is still at a relatively nascent stage, it is on a definitive upward trend.