The IP company, based in Geneva, have currently conducted a research for one of its Swiss clients, that activates in the field of high class chocolaterie, on the design of the retail stores and the conflicts that may appear when a competitor copies the layout of such a store.
The consumer may be misled by the similarity of the design as they may associate a particular trademark-brand the coresponding layout of the retail store. Therefore an adequate degree of protection should be acquired not only for the trademarks of products but also for this specific layouts.
What are the most copied store layouts?
The showcase, the light advertising and the placement of products on shelves.
Summary of the CJEU’s decision
Apple have been in a similar situation with one of its competitors and the CJEU decided in favor of the Californian company.
The CJEU ruled in Apple’s favour and held:
A design of the layout of a retail store can be registered as a trade mark provided that the design is capable of distinguishing the services of the trade mark applicant from those of other businesses and that the mark meets the other requirements for registration.
A design of a retail store is capable of distinguishing the products or services of one business from those of other businesses in circumstances where the design and layout departs significantly from the norm or customs of the business sector concerned.
Provided the conditions above were satisfied, the CJEU found that a design and layout of flagship stores of a goods manufacturer could be registered not only in respect of the goods themselves but also for services, even where those services do not form an integral part of the offer for sale of those goods. The example of services given in the Apple case included the carrying out of in-store demonstrations of the products on display.
Why this is relevant to the Food and Beverage sector
The CJEU’s ruling will be welcomed by brand owners in the food and beverage sector which operate establishments with distinctive layouts which are not purely functional.
The possibility of trade mark protection for distinctive layouts of commercial establishments offers an additional level of protection where brand owners might previously have been forced to rely on the law of passing off to take action against copycat establishments, or on trademark registrations for just certain aspects of the appearance of a commercial establishment, such as a particular color when applied to specific surfaces.
The decision will be of particular interest to franchisors in the food and beverage industry, potentially making it easier to take action against a former franchisee who may have de-branded but continues to trade in a copycat establishment.
As this decision has been made by the highest court in the EU it will apply across the EU. However, it is likely to be interpreted differently by the various trademark registries and local courts and it will be necessary for the layout of the premises to be unique, or to have become distinctive of a particular business over time, in order for it to be capable of registration as a trademark.
This may lead many already well-established restaurant and bar chains to adopt more standardized interior designs in order to maintain a strong identity in their current layouts (including close monitoring of franchisees’ premises) or, like new entrants to the market, to devise new, increasingly innovative layout designs.
