Our Senior Associate, Deeksha Anand discusses “Trade Mark Protection for Store Layouts in India”
Over the years, the scope of unconventional/ non-traditional trade marks has expanded substantially. A new addition to this category of marks is the design/trade dress and layout of store interiors and exteriors (“Store Layouts”).
The protection of Store Layouts as a form of intellectual property assumes importance in today’s highly competitive world where brand owners are leaving no stone unturned to provide consumers an enriching and wholesome experience, rather than offering just a service. When consumers start identifying Store Layouts with a particular brand, the protection of the IP in such a layout, especially to bolster any future enforcement efforts, ought to be explored.
While there is no explicit mention of protection of Store Layouts under the Indian trade mark law, the definition of “trade mark”[1] is broad enough to protect any mark which is capable of being represented graphically and functions as a source identifier. The Registry’s e-filing portal allows for filing of applications under the following categories/types – word, device, shape of goods, three dimensional, colour and sound. Unlike some foreign Trade Mark Offices, that require applications for Store Layouts to be filed as three-dimensional marks or under the “others” category, it appears that the Indian Trade Marks Registry (“Registry”) requires these applications to be filed as device marks. As an example, the application[2] for the layout of “The Vedic restaurant” (shown below), which was initially filed as a three-dimensional mark, was required to be amended to a device mark by the Registry.
Another crucial aspect of applications to register Store Layouts is the description of the mark and the features of the mark in which rights are sought to be claimed. In the absence of any guidelines for using dotted or straight lines to depict the parts of the mark in which protection is claimed, a detailed description of the mark highlighting the unique placement of the articles, the colour scheme, the wording in the mark, spacing between articles, theme and get up, etc., assumes automatic significance in India.
As a corollary, one of the credible challenges that applications for Store Layouts face, is proving “distinctiveness”. While the Registry does not seem to label such applications as inherently non-distinctive – the application[3] for the design of the entrance of a MARY COHR salon and layout of its interior (shown below), for instance, was registered without receiving any objections – more often, than not, such applications are objected on the ground that the mark is non-distinctive and, as such, not capable of distinguishing the goods/ services of one person from those of others.
Examples of some marks that were objected on non-distinctiveness grounds are shown below.
Annexing pictures of the actual stores, showing evidence of use, if any, stressing on the description of mark and consistency in the store layouts worldwide, for instance, could be helpful in overcoming such an objection on non-distinctiveness.
While it would be reasonable to believe that applications for store layouts would seek protection in respect of services, this may not necessarily be true. For instance, many applications for the layout of HEALTH & GLOW stores (see, an example, below) have been accepted by the Registry in respect of cosmetics and pharmaceutical products in Classes 3 and 5, respectively.
While the registration of a Store Layout confers statutory rights in it, thereby opening the doors to the remedy of trade mark infringement, the trade dress of Store Layouts can also be protected through the common law remedy of passing-off. The landmark Delhi High Court ruling in Colgate Palmolive Company v. Anchor Health and Beauty Products[8], observing trade dress to be the overall impression that a customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. is of prominence here.
The recognition of Store Layouts as a form of intellectual property has reinforced the importance of a consumer’s visual perception of her/his surroundings, that should be tapped by brand owners to enhance their brand recall value. Meanwhile, caveat interior designers.
[1] 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 and may include shape of goods, their packaging and combination of colours…”
[2] Application No. 4100482
[3] Application No. 4073262
[4] Application No. 4191623
[5] Application No. 4134918
[7] IRDI No. 2890926 (IR No. 1224986)
[8] 108 (2003) DLT 51