Shopping centres – Trade marks – Service provision – Registration

In the matter of trade mark application no. 2417145B sub nom Land Securities Plc: in the matter of trade mark application no. 24200205B sub nom Capital Shopping Centres Plc: in the matter of trade mark application no. 2462651D sub nom Hammerson Plc: ChD (Mr Justice Floyd): 25 July 2008.

The appellant shopping centre operators (O), in three joined cases, appealed against the decisions of the respondent registrar refusing to register their marks as trade marks in respect of shopping centre services. The marks were White Rose logo (series), Victoria Centre Nottingham logo (series) and Eden Quarter. O had all applied to register their marks in respect of goods and services in a number of classes, including Class 35.

The first appellant's specification of services in Class 35 included ‘the bringing together for the benefit of others, of a variety of retail outlets, entertainment, restaurant and other services, enabling customers to conveniently view and purchase goods and services and make use of such facilities in a shopping centre or mall’. The specification of services in Class 35 in the other two cases did not differ from that specification in any material respect. The registrar refused to register the marks in respect of the specified services on the basis that they were not services within the meaning of Directive 89/104 and the Trade Marks Act 1994, and that the specifications of the services did not comply with the Trade Marks Rules 2000 because they lacked the requisite degree of clarity.

O maintained that, although shopping centre operators did not generally retail goods to the public, they offered a number of services, including facilities such as car parks, customer information and loyalty schemes.

The issues were: the meaning of services in the directive and the act; whether the services were normally provided for remuneration; whether operators of shopping centres provided the services; whether the nature of the services was sufficiently and clearly indicated.

Held: (1) The word ‘services’ within the directive and the act had to be of the kind that were ‘normally provided for remuneration’, as described by article 50 of the EC Treaty (Nice), Praktiker Bau und Heimwerkermarkte AG v Deutsches Patent und Markenamt (C418/02) (2006) Ch 144 ECJ (2nd Chamber) applied. Given that the directive was made pursuant to the treaty, it would be surprising if the services to which the directive applied were a wider category than those regulated by the treaty itself.

Also, it was implicit in Praktiker that the European Court of Justice regarded the definition of services as including the restriction drawn from article 50, and the opinion of the Advocate General in Praktiker supported that view, making the contrast between eligible services and services provided on a purely disinterested basis. Accordingly, to be registrable, the services had to be of the kind ‘normally provided for remuneration’.

(2) Shopping centre operators provided a mix of retail outlets and other social and entertainment facilities such as restaurants, bars and cinemas, together with other common services such as car parks and customer information. In terms of article 50, the activities were ‘of a commercial character’, placing them beyond doubt within the definition of ‘services’ in the treaty, and therefore in the directive and the act. The shopping centre operator may be remunerated in a manner that was directly related to the custom that it attracted but, even if that was not so, the services were not provided in a purely disinterested way. It would not be legitimate to read into the definition of services a further requirement as to the manner in which the remuneration was paid. Accordingly, the services were ­‘normally provided for remuneration’.

(3) Although the connection between a shopping centre operator and the selection and purchasing of goods was different from the connection between a retailer and the selection and purchasing of goods, that did not mean that the operators of shopping centres were not providing services within the meaning of the legislation. Shopping centres were increasingly branding their activities, and consumers had a choice as to the shopping centre at which they would spend their money, and would distinguish between them by use of the shopping centre’s brand. In that manner, operators were generating goodwill associated with their brands. The trade mark of the shopping centre was fulfilling its essential function, namely distinguishing the services of one undertaking from those of another, and guaranteeing the origin of services to which the mark was applied. Therefore, there was no reason in principle why it could not be said that a shopping centre operator was providing the services.

(4) Subject to certain matters, the wording of the specification in each case was sufficiently clear to capture the services of a shopping centre operator. Some of the criticisms of certain parts of the specifications were justified, but some of the specific criticisms could in principle be remedied. In the circumstances, the registrar was wrong to refuse the applications for trade mark registration as a whole under rule 8(2)(b) of the 2000 rules.

Appeal allowed.

Richard Arnold QC (instructed by Nabarro) for the appellants; Michael Edenborough (instructed by the Treasury Solicitor) for the respondent.