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Monday, 28 July 2008

One step beyond Praktiker: shopping centres as trade mark applicants

The English, it has been said, are a nation of shopkeepers. How strange, then, that a matter as fundamental as the right of a shopping centre operator to register its name as a trade mark should have had to wait so long for a definitive ruling. This has now been given, last Friday, by Mr Justice Floyd (Chancery Division, England and Wales) in Land Securities plc, Capital Shopping Centres plc and Hammerson plc v Registrar of Trade Marks [2008] EWHC 1744 (Pat).

This was a decision in respect of three joined cases, which were heard together in order to determine the question of whether the operator of a shopping centre could register a trade mark for the services it might provide (White Rose, Victoria Centre and Eden Quarter being the names at stake). In each case an application was made by a shopping centre operator and registration was refused. The applicants collectively maintained that, although shopping centre operators did not generally retail goods to the public, they offered a number of services, including

(i) selecting an attractive location with good transport links; (ii) providing a well-designed building or group of buildings, with a suitable layout; (iii) selecting and attracting a suitable mix of retail outlets; (iv) selecting and attracting a suitable mix of other facilities; (v) providing an attractive and comfortable ambience; (vi) providing facilities such as car parks, toilets and creches; (vii) providing convenient opening hours; (viii) providing information and assistance to customers; (ix) providing specialist assistance such as language assistance and facilities for the disabled; and (x) providing loyalty schemes of various kinds.
In support of the applications, evidence was furnished that shopping centres made extensive use of branding, undertaking advertising, publishing magazines and issuing loyalty cards. The Registrar was unmoved by their please. In his view (i) the services specified in the applications were not services within the meaning of Council Directive 89/104 and (ii) the specifications of the services lacked the requisite degree of clarity.

Floyd J allowed the applicants' appeals. In his view
* the word "services" within meant services which were of the kind that were "normally provided for remuneration". However, the definition of "remuneration" did not have to be a narrow one, relating to income that was separately itemised separate invoices. Thus it could include the services of a shopping centre operator, which carried on activities of "a commercial character". Nor was there was no reason in principle why a shopping centre operator could not be said to be providing services.

* one would not expect legislation concerned with trade marks to afford protection to activities which were wholly altruistic. Though a shopping centre operator might be remunerated in a way that was directly related to the custom which it attracted, even if that was not so, its services were not provided in a purely disinterested fashion.

* in each of these three cases the applicants had been providing services.

* the applications should be remitted so that the specification of goods/services could be properly designated.
The IPKat agrees with the judge's analysis and also with his conclusion that no reference to the European Court of Justce for a ruling on a preliminary question was needed here, since necessary principles could be extrapolated from its earlier ruling in Case C-418/02 Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873 (see IPKat notes here and here) where the applicant was a provider of retail services rather than, as here, a shopping centre operator. Merpel says, my favourite bit of the shopping centre is where you line up to take things back ...

Shopping for cats here
Cats in need of retail therapy here

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