In a nutshell, yes!
When we speak to our client retailers, we often hear from them that in an overcrowded competitive marketplace, the design and layout of a retail store is equally as important as the the brand name of the business which customers will come to know and identify as synonymous with the business of the retailer. If this is true, then it makes sense that such design and layout of a store be regarded as valuable IP worthy of protection.
This was the case with Apple inc who successfully applied for the registration trademark of their store layout. But, what did they trademark? According to the trademark certificate, it described the store layout as:
“…a primarily glass storefront, rectangular recessed lighting traversing the length of the store’s ceiling, Cantilevered shelving and recessed display spaces along the front side walls, rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store, multi-tiered shelving along the rear walls, and an oblong table with tools located at the back of the store below video screens in the back wall”
Microsoft has also trademarked their retail stores. Their trademark certificates describe the distinguishing features as follows:
“… three-dimensional trade dress depicting the interior of a retail store with four curved table tops at the front and rear side walls and a rectangular band displaying changing video images on the walls”.
Initially, the US Patent and Trademarks Office refused to grant Appel its trademark arguing that in order to be capable of registration, such mark must be capable of distinguishing Appel’s goods and services from that of its competitors. To establish its distinguishing features, Appel filed an explanatory document of over 100 pages setting out in great detail that its store layout was inherently distinguishable and, therefore, capable of qualification for registration of a trademark. In the end, the US Patent and Trademarks Office was convinced.
By trademarking its store layout, Appel not only ensures that its stores will be protected from copycats but it is also one of its competitive strategies to ensuring that its overall Appel brand (as experienced by its customers and the public at large entering into its stores) is uniquely distinct from other competing retail stores.
South African retailers will no doubt in short-time identify and appreciate the value in protecting their store designs and layout and begin the process of applying to our trademarks office for registration of similar trademarks. But is the trademark route the only option available to retailers in South Africa?
The answer to the question is no, not necessarily. It is possible that a design and layout of a retail store may find protection under our Designs Act if it can be established that such store design and layout is an article of an aesthetic and/or functional design that is new and original.
Class 32 of the Designs Act allows for the protection not only of tangible articles but also of so-called “get-up”. The term “get-up” is a reference to the look and feel of an article or a place and is best explained with reference to its definition in the Oxford English dictionary describing it as:
“a style and arrangement of dress, especially an elaborate or unusual one”
Whether or not the get-up of a store layout qualifies for protection under the Designs Act is a question of fact but there appears no reason why it shouldn’t.
Adopting the competitive strategic attitude of the likes of Appel and Microsoft, the future seems to be that a store design and layout is as valuable today as is the brand name of the business and, therefore, worthy of protection from copycats. Under South African law, retailers may want to also consider applying for recognition and protection of the store design and layout under the Designs Act.
As they saying goes, two is always better than one!
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