Legal Updates - Intellectual Property Law – Trade Mark

Intellectual Property Law – Trade Mark - Remuneration

The case of Land Securities plc and Others v Registrar of Trade Marks [2008] concerned a determination on whether a trade mark owner (the operator of a shopping centre) could register a trade mark under the Trade Marks Act 1984 in respect of the services the trade mark owner provided. There were three cases heard at the same time.

The trade mark owner’s application was refused by the Registrar of Trade Marks in respect of:
 

”… Selecting an attractive location with good transport links; providing a well-designed building or group of buildings, with a suitable layout; selecting and attracting a suitable mix of retail outlets; selecting and attracting a suitable mix of other facilities; providing an attractive and comfortable ambience; providing facilities such as car parks, toilets and crèches; providing convenient opening hours; providing information and assistance to customers; providing specialist assistance such as language assistance and facilities for the disabled; and providing loyalty schemes of various kinds”.

The trade mark owner also provided evidence to support the application on the grounds that shopping centres made extensive use of branding, undertaking advertising, publishing magazines and issuing loyalty cards.

The Trade Mark Registrar rejected the applications on the following basis:

• The services specified in the applications were not services within the meaning of Council Directive (EEC) 89/104 (to approximate the law of the member states relating to trade marks) (“the Trade Mark Directive”); and
• The specifications of the services lacked the requisite degree of clarity.

As a result of this decision, the trade mark owners appealed.

On appeal, the issues concerned the meaning of 'services' in the Trade Mark Directive and the Trade Marks Act 1994, whether:

• The services were normally provided for remuneration;
• Operators of the shopping centres provided the services; and
• The nature of the services was sufficiently clearly indicated.

The appeal was allowed. The courts held that:
 

• The meaning of the term 'services' under the Trade Marks Directive and the Trade Marks Act 1994 meant services ‘normally provided for remuneration'.
• The term 'remuneration' did not have to be narrowly defined, separately itemised on a separate invoice, but it could encompass the services of a shopping centre operator that carried on activities of 'a commercial character'.
• There was no reason in principle why it could not be determined that a shopping centre operator was providing the services.
• Under European law the definition of services covered the provision of services for remuneration.
• The advocate general's opinion supported that view.
• One would not expect legislation in relation to trade marks to afford protection to activities that were wholly altruistic.
• A shopping centre operator might be remunerated in a way which was directly related to the custom which it attracted, even if that was not the case, the services were not provided in a purely disinterested manner.
• The trade mark owner was providing services.
• The trade mark owners should have the opportunity to overcome the objections to the specification of the goods.

The appeal was allowed and therefore the case was duly remitted for the specification of the goods to be limited as described by the courts.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.