Store layouts play an increasingly important role in brand recognition and brand recall. Take a world-renowned brand like Apple, for instance. How does every Apple store that we walk into feel the same all over the world? While there is certainly a tingling excitement that the purchase of shiny new gadgets brings, there is a more subtle factor at play: the store layout. Apple stores maintain a certain consistency across locations, which forms an integral part of their brand. Apple store layouts tend to comprise flat tables, with white shelves and decor, glass walls, and so on. These distinctive features make us instantly recognise that it is a store that sells Apple products, and not any other kind of store. This story of Apple stores is important because it highlights the different ways in which intellectual property can be used innovatively (!) in this era for building brand value and goodwill. Gone are the days when the companies simply affixed their trademarks to a product, or used traditional advertisements to promote a service. Now, companies want consumers to be, literally and physically, surrounded by their trade mark whilst availing themselves of their services.
From architectural designs to store layouts
Of late, the Indian Trademarks office has begun to receive a number of applications for the protection of store layouts. This new wave of applications arguably started when The Indian Hotels Company Limited filed applications for the protection of the "Main Dome of Taj Mahal Palace" and the "Taj Mahal Palace and Tower Wing Exterior" in the year 2016 for architectural design registration. The Taj Hotel in Mumbai is globally recognised as an iconic structure, and was granted registration, in recognition of 100 years of its structural existence, which had contributed to its brand value. One of the main reasons for securing registrations for the iconic structure was to protect the structure from being used in productions that could tarnish and dilute the image.
Following this, the Bombay Stock Exchange Limited also applied for trademark registration of its 28-storey Phiroze Jeejeebhoy Towers (the landmark synonymous with Mumbai's Dalal Street). This follows an international trend of famous buildings obtaining similar protection, including the Sydney Opera House in Australia, the Eiffel Tower in Paris, France, the Empire State Building in New York, USA, and many more.
Registering a Store Layout as a Trademark in India
What happens when the stores are located inside larger buildings such as malls, or on famous streets that cannot be protected in their entirety? This is where store layout protections enter the picture. In multiple cases, foreign courts have acknowledged that the layout of a retail store may allow products or services to be identified as originating from a particular undertaking. The only condition that needs to be satisfied is that the layout departs significantly from the norm or customs of the economic sector concerned.
The Indian Trade Marks Act 1999 under Section 2(1)(zb) requires the following conditions to be fulfilled for a mark to be a trademark:
- The mark should be capable of being represented graphically
- The mark should distinguish the goods or services of one person from those of others.
This dual test is also applicable when applying for the registration of non-conventional trademarks like store layouts. By registering store layouts, an applicant can attempt to control and limit unfair commercial use of their layouts by others. The added benefits attached to these registrations is the potential increase in commercial revenue generation through licensing. Some recent applications filed for the protection of store layouts at the Indian Trademarks Office include the following:
Please click here to view the table.
Demonstrating distinctiveness in store layouts
A common objection from the Trademark Office that has arisen in these applications is that the mark is not inherently distinctive unless the layout departs significantly from the norms and customs of the sector. The burden to overcome this falls on the applicant, who is tasked with having to show that the mark has acquired distinctiveness or secondary meaning. The level of distinctiveness that a store layout has to exhibit is also subject to quite a high threshold. Another factor which an applicant must prove is that the layout is so well-known amongst its relevant audience that it creates a perception of its commercial origins.
Trademark law in India does not contain any specific provision for protecting store layouts, and there is no judicial precedent in this regard either. That said while defending objections of lack of distinctiveness in such cases, applicants usually rely upon the case of Apple Inc. v Deutsches Patent-und Markenamt(C-421/13) delivered by the Court of Justice of the European Union (CJEU), where similar arguments were made when seeking trademark protection for Apple's retail store layout in Germany, after it had already been registered as a 3D trademark in the USA.
In this case, the CJEU observed that the layout in question had features which distinguished it from other layouts. This was backed by the finding that the layout was constructed using a collection of lines, curves and shapes, which could constitute a distinguished representation of the store on paper, hence being able to differentiate the products or services undertaken by Apple, from other companies. It was finally held that Apple's layout was eligible for trademark protection in the EU as well because of how distinguishable its layout design was, and also because the goods and services of Apple could be associated with it by the public solely on the basis of this layout.
This trend of seeking IP protection for store layouts is being embraced enthusiastically by Indian retailers who operate commercial establishments with distinctive layouts, especially through the franchise model. The Indian Trademarks Office has also begun to recognise store layouts as a form of unconventional trademark protection, and in keeping with developments abroad, has recognised or accepted for registration such layouts from both domestic and foreign players. With exponential growth in India's consumption economy projected in the decades to come, store layout protection is going to be a valuable additional level of protection for retailers, who would earlier rely on the law of passing off to take action against those who copy their store layouts.
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