Calling all franchisors and retailers! Have you protected your store layout yet?

In recent years, colours, sounds, shapes and smells have all been registered as trade marks in Europe.  In July, the Court of Justice of the European Union confirmed, in an action brought by Apple Inc., that “the distinctive design layout of a retail store” could also be protectable under EU trade mark law.

The benefits of registering a store layout as a trade mark, (and these benefits also apply to proprietary store equipment, fixtures and fittings), include a right to stop competitors copying layouts or creating lookalike stores. It also allows companies to licence layouts to third parties, including franchisees, and to force ex-franchisees or other people that take over a premises on lease expiry, franchise agreement termination or franchisee administration from using the layout and any proprietary equipment, fixtures and fittings that are protected by a trade mark registration.

To obtain a trade mark registration for a design layout, franchisors and retailers will need to meet the same registration criteria as for any other trade mark:

  • There needs to be a sign.
    • That sign has to be set down in a graphic representation. Apple’s application was a 3D representation of a flagship Apple store using a series of lines, curves and shapes.
    • The layout has to be different from other retailers’ and franchisors’ store layouts;  it needs to be able to distinguish the applicant’s goods or services from those of other people and have a “distinctive character”.

The key take-away from this decision is that retailers and franchisors should be looking at their layouts (and equipment, fixtures and fittings) with fresh eyes and considering whether they are distinctive of their brand and valuable enough to warrant protection.

Clearly, some franchisors and retailers may need to work on making their layouts more distinctive, but doing so can also enhance customer experience, loyalty and goodwill, further distinguishing a franchisor or retailer from its competitors.

Once store layouts are registered as trade marks, it will be interesting to see how franchisors and retailers enforce them and use them to oppose applications made by competitors.

For more information please contact Lewis Cohen.

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