Crucial analysis of recent developments from SJ Berwin LLP’s Intellectual Property Department

(LAWFUEL) – A reality check – positive case law on registering your brands for the goods and services that count

Common sense has prevailed. The UK trade mark registration system should from now on allow for shopping centre owners to register their valuable brands as trade marks in relation to the actual services that they provide. This case follows around 3 years after “retail services” were recognised as being protectable by the European Court of Justice (Praktiker Bau- und Heimwerkermärkte AG, C 418/02), and could have wider ramifications in relation to other types of goods and services that have faced objections in the past, due to out-dated views of what “goods” and “services” are.

A joint case, Land Securities plc, Capital Shopping Centres plc and Hammerson plc v Registrar of Trade Marks [2008] EWHC 1744 was brought by 3 centre owners/developers. Their trade mark applications to register the names of their respective developments (WHITE ROSE (in logo form), VICTORIA CENTRE and EDEN QUARTER) had faced refusals by the UK Intellectual Property Office, on the basis that specifications such 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” did not qualify as “services”, and that the descriptions lacked clarity.

The High Court has allowed the appeals, finding that these types of services can be the subject of trade mark protection, and has ordered that the applications be reconsidered.

This is a welcome finding, and will provide far more robust protection for these types of brands and – it is to be hoped – goods and services brands in other fields where such protection may have been rejected previously.

Businesses should review their current brands portfolio to assess whether new filings should be made, or amendments sought against their existing registrations. This type of review or audit should in any case be conducted on an annual basis to ensure that your brands portfolio reflects your current and intended marketing activities.

For further information please contact either David Rose at [email protected], Ray Black at [email protected] or Bill Ladas at [email protected]

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