The high street is struggling. Even in the retail mecca that is London’s Oxford Street, stores face declining profits. To survive in today’s tricky climate, retailers must provide the engaging experiences that consumers demand to compete with the ease and choice of online shopping.

As humans, we generally want (and certainly need) social interaction and a sense of belonging to a community. Arguably, retail stores are still the best places for brands to connect to their customers, deliver their brand messages and ultimately drive sales. Today, this just needs to be done in more creative ways — creating destinations that make customers keen to come back (a good example of a retailer that does this well is Selfridges). With $8 trillion expected to be spent on the experience economy by 2030 in the US alone, this certainly seems to be where retail is headed.

But how can retailers protect the outstanding ‘experience’ they offer? What’s to stop competitors from copying and therefore devaluing your experience? While it depends on the experience itself, many elements of creative retail experiences are likely to be protectable with IP rights, since they’re forms of differentiation and competitive advantage, and are often uniquely identifiable by consumers. Here are a few key examples.

Diversification

Echoing what I wrote in my piece on brand diversification, successful retailers are expanding their offering to provide in-store experiences which are indirectly related to their customer base. This can go so far as to ‘define’ their values and competitive advantage can be achieved by protecting elements of the full experiential package.

A ground-breaking case involving the White Rose, Victoria Centre and Eden Quarter shopping centres challenged the very definition of ‘services’, which previously meant only those that were "normally provided for remuneration". It was decided that the definition of ‘remuneration’ didn’t have to be a narrow one, and therefore could include the services of a shopping centre operator, which carried out activities of "a commercial character". The outcome of this case enabled the applicants to secure trade mark registrations for the services that they provide.

In the US, this diversification is being taken one step further where a new ‘mega mall’ in New Jersey is due to have roller coasters, water slides, a bunny garden and a 16-storey indoor ski slope in a bid to attract customers. Provided that the specification of services is sufficiently broadly-worded, ‘The American Dream’ mall should at least be able to stop anyone else from using a similar name for any of the experiences it’s providing.

Layouts

After a lengthy struggle, Apple has managed to protect the design and layout of its stores as a trade mark, but only for “services which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings”. In other words, your store would need to have a unique layout and it’s likely that you’d need evidence to show that the layout is recognised by consumers as being unusual. When it comes to trade mark law, these are high hurdles to overcome.

Retailers which launch new concept stores may find that trade mark protection isn’t available without the requisite distinctiveness (either inherent or acquired). However, copyright and/or design right protection might still be relevant for parts (or all) of the elements of the store. Of course, it’s always important to take advice when it comes to seeking protection from an experienced professional who can inform you about your unique circumstances.

Smells

Other attempts to enhance the retail experience involve signatory smells, such as the pervasive Abercrombie & Fitch scent “Fierce”. For many years an A&F store could be located by following your nose. In theory, smells (and other unusual brand elements) can be registered as trade marks. There are issues surrounding accurately describing a smell and you couldn’t register a smell for the goods themselves (e.g. for perfumes per se). However, with changes to UK trade mark practice following the EUTM Directive, it may be possible to protect a smell for retail services, particularly if you can prove that a smell has become synonymous with the services provided.

The EUTM Directive is designed to account for changes in technology and what might form part of a brand. As a result, it’s now possible to file representations of more unusual marks in more appropriate formats. Shapes can be filed as OBJ, STL and X3D files; figurative marks, patterns and colours can be filed as JPEGs; sounds as MP3s; and motion, multimedia and hologram marks as MP4s.

Colours

In theory, colours can be protected as trade marks for services — think light blue for Barclays or green for BP. It’s difficult to think of a colour that has the requisite distinctiveness for one retailer to be able to monopolise it, however this isn’t impossible. Although still fighting an uphill battle to keep and enforce the registration, Louboutin has so far manged it for the red sole of its shoes.

Protecting your retail brand with IP

If you can break-down the customer journey into micro-moments from the first encounter to the last, certain elements of your retail experience can be protected to stop others from copying them — perhaps with a little creative thinking from your legal advisors.