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Trade Mark Victory for Shopping Centre Operators

Three shopping centre operators have scored a victory in the High Court in respect of their shopping centre brands. This victory will benefit any shopping centre operator looking to promote and protect their brands in the UK.

Land Securities, Hammerson and Capital Shopping Centres each applied to register certain trade marks (including respectively the White Rose logo, the Victoria Shopping Centre mark and Eden Quarter), but were initially refused protection. This was primarily because services offered by shopping centres (such as “the bringing together for the benefit of others, of a variety of retail outlets, entertainment, 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”) were not “services” within the meaning of existing UK and EU trade mark law.

The shopping centres successfully appealed this decision to the High Court of England and Wales with the Judge (Floyd J) in this case making some very important and useful observations, as follows:

When seeking to protect a trade mark in respect of “services”, those services must normally be provided for remuneration;

Shopping centre operators provide a mix of retail outlets and other social and entertainment facilities such as restaurants, cinemas and bars, together with common services such as car parks, customer information and loyalty schemes;

These services are part of the shopping centre operator’s trade and are of a commercial nature, in return for which the operator receives payment (eg by way of rental income or retail revenue sharing); and

Shopping centres are increasingly branding their activities, and shoppers are distinguishing between these brands based on what each brand has to offer. As a result, operators are generating goodwill associated with their brands, and therefore trade mark applications for shopping centre services should in principle be allowed.

This decision, along with the decision of the European Court of Justice in 2005 to allow trade marks to be registered for “retail services”, highlights the ever-increasing brand awareness activities of those involved in the retail sector. It also makes it clear that shopping centre operators looking to protect their brand in the UK can now do so.

Clarke Willmott offers a fixed cost totally transparent trade mark registration service. Called *futureproof it is designed to meet the needs of brand owners looking for certainty over costs in protecting their marks. For more information please visit www.cwfutureproof.co.uk.