Registration of trade marks for retail services has been allowed for some time now, but the recent High Court case Land Securities plc, Capital Shopping Centres and Hammerson v Registrar of Trade Marks extends that approach to the services provided by shopping centres and potentially broadens the extent of commercial services in general that may be registrable.
- Any "activities of a commercial character" not provided in a purely disinterested fashion may now be registrable, following Floyd J's broad interpretation of services "usually provided for remuneration";
- Brand owners will need specialist advice on the wording of the services for which they want to register their trade marks. The Land Securities case makes it clear the chosen services must be sufficiently and specifically identified in order for the registration application to succeed;
- Trade mark registration has many benefits in terms of the protection of a brand name and image. It provides a more easily enforceable right of action than those associated with unregistered rights. With an unregistered right, a passing off action or an attempt to trigger the interest of regulatory bodies may be the only course of action available to you.
Retail services and management and property services already registrable:
Some shopping centres had already achieved registrations for their logos and brand names in respect of the services they offer. One such example is a registration for "management and promotion of shopping units and retail outlets and management of commercial property and real estate, and the letting, leasing and rental of shopping units, shops, shopping centres and retail parks" and more, which covers most of the "services" that any shopping centre management company might provide.
Now "shopping centre services" and potentially any "activities of a commercial character" may be registrable:
What the Land Securities case confirms is that the use of a trade mark in relation to the service of encouraging shoppers to spend money in that centre rather than another is a registrable service.
Floyd J agreed with the ECJ's finding in Praktiker (a case on the registrability of retail marks – see our IP newsflash of 13 July 2005) that
"[a]lthough not separately invoiced [the services] may nevertheless be deemed to be provided for remuneration because they are supplied in order to promote the sale of certain goods and not on a purely disinterested basis…"
The services involved in providing a good mix of types of retail outlet and types of leisure facilities, the right ambience (well designed buildings, background music etc), convenient opening hours, information services, loyalty schemes, car parking and crèches etc., were undoubtedly of benefit to the retailers in the shopping centre and were commercial in nature even if not necessarily directly remunerated by those benefiting from the service (the public or the retailers).
In this conclusion Floyd J differed from the Registrar who had taken a narrow view on the meaning of services "normally provided for remuneration".
A point of wider application to come out of this case is the expansion of registrable services. Floyd J held that services "normally provided for remuneration" would be registrable, but it appears that "remuneration" can be indirect. Any "activities of a commercial character" would now appear to be registrable as long as they are not provided in a purely disinterested way and they are sufficiently well defined.
Care still needed with specification:
Trade mark registrations for the services offered by shopping centres may now be protectable provided they are sufficiently well defined.
In this case the specification applied for commenced as follows:
"the bringing together for the benefit of others, of a variety of retail outlets, entertainments, 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 wording was held by Floyd J to be sufficiently clear provided the "other services", "such facilities", and the "goods and services" were clarified as to the classes of goods and services involved. These objections did not go to the core of the application in Floyd J's opinion and could in principle be remedied. The application was remitted for the specification to be limited as he suggested