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Branding battle

Published:  28 August, 2008

For the first time a UK court has recognised the value of shopping centre brands after a landmark case brought by Land Securities, Capital Shopping Centres and Hammerson.

The case was brought after the United Kingdom Intellectual Property Office refused to register three trade mark applications in relation to shopping centre services at Land Securities' White Rose centre in Leeds, CSC's Victoria Centre in Nottingham and Hammerson's proposed Eden Quarter in Kingston.

In their original trade mark applications the centre owners submitted a specification of services describing their centres' roles as: "the bringing together for the benefit of others, of a variety of retail outlets ... enabling customers to conveniently view and purchase goods and services and make use of such facilities in a shopping centre or mall."

The examiner took the view that these did not qualify as services, which meant that the applications would be rejected for those particular services.

On appeal, the court was clearly impressed by the evidence filed by the owner/developers in favouring the registration of these marks for the claimed services.

The evidence showed that shopping centres make extensive use of branding to differentiate themselves from other shopping centres. The end goal was to have transactions conducted by consumers within their shopping centre.

An earlier case from the European Court of Justice, that allowed for the registration of trade marks in relation to retail services, was also of assistance. It was argued that the shopping centre services were analogous to (while not exactly the same as) such retail services, and this had some persuasive weight.

Further 'value-adds' from the owner/developers were also seen as part of the offering:

l the publishing of magazines and the issuing of loyalty cards;

l the fact that White Rose shopping centre has a customer service centre and its own 'centre ambassadors';

l Brent Cross (not a party to the case) had several pages on its website devoted to the customer services it provides (parent and child facilities, services for customers with disabilities, language assistance and car cleaning);

l the selection of an attractive location for the centre which has good transport links;

l providing a well-designed building that has a suitable infrastructure and layout to support the centre's operations;

l selecting and attracting a suitable mix of retail outlets;

l providing facilities such as car parks, toilets and crèches;

l providing convenient opening hours.

In the end the court was satisfied that the claimed services can and should be protected. The case has now been sent back to the registry for the final wording to be agreed on.

This is a welcome finding, and will provide far more robust protection for these types of brands. Owners/developers should review their brand portfolios in the light of this decision to establish whether new applications should be filed, or even existing registrations amended.

l Bill Ladas is a senior associate in SJ Berwin's IP team