Introduction

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises,1 this is to provide an exclusive right over the aspect of goodwill and reputation with respect to the goods/service. Trademark are further bifurcated into two types Conventional and Non-conventional. Conventional usually include symbol, colour, shape, but due growing progress in marketing, product is marketed in any way possible where non-conventional mark come into picture. These includes hologram, motion and store-layout.

Store-layout is way of providing an exclusive experience to the customer and the theme of this experience is based on the image, product and reputation of the brand. This creates a valid brand distinction which is a must in this ultra competitive business. Store-layout includes the way product are setup for display, furniture, merchandise in-store it is basically the interior of the store. This experiential control on customer immensely helps in product presentation and to attract customers.

Essential for Store-layout to be trademark

For a store-layout to be a trademark there are certain elements which are necessary like graphical description and distinctiveness

Graphical description

Section 2(zb) of The Trade Marks Act, 1999 defines “trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. 2 Trademark is for protection of physical representation of brand, companies, unless there is a something people see or experiences,they cannot develop brand recognition, it also necessary for registration purposes as complete and clear description of the store-layout make future dispute nearly impossible.Usually, this physical representation is done by symbol, colour that is the conventional way. Certain brand focus on their brand outlet where customer have a direct contact with the brand. Everything from the furniture they way its position, colour on the walls, any accessories added there on which is a signature for the brand, all this makes up the graphical representation part.

Distinctiveness

Trademark is made with purpose of creating a distinction in the market for the customer as well as protection of existing reputation from any imitation or misrepresentation. Store-layout provides structural distinction as seen in In a landmark ruling of Apple Inc v Deutsches Patent-und markenamt, the CJEU held the glass stair and flat tables amount to an exclusive distinction and confirmed that design for a retail store’s layout can be registered as a trademark.3

The other aspect necessary for trademark registration is subjective to the case in question Sometime even when the store-layout may have graphical representation and distinction still be rejected for trademark registration suppose if the store-layout is similar to a registered store-layout it will be rejected.

History of store-layout as an IP

Trade is rooted from a long time in the human history starting with bartering then selling in exchange for money. This led to formation of markets. The first retail store date back to 800 B.C.

Fast forward a couple of thousand years are now there are these retail giants like Walmart,Costco, D-mart. This large-scale approach created a marketing opportunity by influencing the customers experiences. Store-layout is very crucial in making a positive impact. Most of the it must make product accessible, attractive, and unique store-layout.

[Image Sources: Shutterstock]

The first ever judicial recognition was done by the U.S Supreme Court in the case of Taco Cabana v Two Peso , Taco Cabana had registered its hotels décor and outside of the store here the court held that interior as well as exterior of the store combineforms the store-layout.4In India many structure were trademarked like BSC building, Taj Hotel, but they come under architectural structure and not store-layout as it was the only structure of the overall building not for the specific purposeful placement of interior to attract customers. The Vedic Restaurant was the first to apply for trademark for the store-layout but it was done under 3D mark, but was asked to change to device mark. Thus store-layout is becoming a new growing IP

Store Layout situation internationally

StoreLayout has obtained importance all over the World. America is considered as a pioneer of store-layout as a trademark. First case regarding store-layout was decided by U.S Supreme Court in Two Pesos v. Taco Cabana as discussed above and also many other landmark judgments deciding the future of store-layout protection. In 2008 Stuart Weitzman had applied for trademark for the interior of the store.In the case of Kiko v Wycon the Italian Supreme Court held that store plan and layout is eligible for copyright protection.4 Apple Inc in 2010 applied for trademark it’s unique arrangement of table, lights etc which made up the store-layout was accepted by USPTO. This international recognition helped store-layout to be registered in India.

Store-layout in Indian Scenario

There No such Guidelines as such in Indian Law specifical in regards to store-layout but it’s registered under The Trademarks Act, 1999 under the description of ‘devices’ internationally its registered under 3D mark. The first case in regard to this matter was the Vedic Restaurant case in which they initially had filed an application to trademark their layout of restaurant under 3D trade mark later it was asked to change to application under device mark.In 2019,Mary Cohr a multi branch salon who had filed for the trademark of their unique store front and the interior of the salon was accepted without any objection. In Colgate Palmolive v. Anchor Health, the court held the colour shape of the container of the product puts a effect on the customer same if there is a service instead of a product then the office becomes the ‘container’.5In question to the protection given under law is such that store layout includes structural design which are subject be copied so they are protected under The Trademarks Act 1999.

Conclusion

Store-layout is considered as the new kid in IP. It’s an innovative step towards interior of the store to make the experiences of the customer remarkable. Store-layout include anything which is within the store and increases the brands uniqueness. In India store-layout is given a registration under trademark and protection under the same. In upcoming years, the is a high possibility of companies registering these non-conventional trademarks like store-layout with new judicial decision there will be a clarity on the position of store-layout in IP.

Author : Kaustubh Kumar, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

REFERENCES

1. Trademark definition given by World Intellectual Property Right Organization

2. Section 2 (zb) of the Trade Marks Act, 1999

3. Apple Inc v Deutsches Patent- und Markenamt (C-421/13) [2014] Bus. L.R. 962 (10 July 2014)

4. Two Pesos, Inc. v. Taco Cabana, Inc. (91-971), 505 U.S. 763 (1992).

5. WyconS.p.a v Kiko S.p.a. (decision 780/2020)

6. Colgate Palmolive India Ltd. &Anr. v. Anchor Health And Beauty Care Pvt. Ltd.2003 VIII AD Delhi 228, 108 (2003) DLT 51, 2003 (27) PTC 478 Del, 2004 (1) RAJ 214