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At this day and age the brands and companies are not limited to only protecting the name, logo or trade dress of the brand, a peculiar scent or smell also form an integral part of the brand image as it invokes the olfactory memory of a person. Brand promotion now is not limited to the advertisements you see on television sets, rather now employ all five senses of a person to win their trust and attention known as sensory marketing. One such famous example is the outlet store of Apple. The distinctive design of the inside of Apple store is the same across the world and appeals to the consumer in associating it to high end electronic products.  

Companies invest a huge amount in the development of unique or distinctive store outlets, seeking protection for it, therefore, becomes imperative. Protecting store layouts as the trademark is a fairly new concept in India, Trademark Act, 1999 dose not expressly have provisions for it and jurisprudence of it is yet to be established. In India, several applications have been filed for store layout as device mark.  Two such examples are the store layouts of MARY COHR vide Application No. 4073262 which has been applied in class 44 as:

(Store layouts of MARY COHR)

(Store Layout Of The Vedic Restaurant)

(Image Source: official records of the respective applications stored at the official website of Trademark Registry)

Interestingly application for the store Layout Of  The Vedic Restaurant was filed as a three-dimension mark vide application 4100482 on 26^th February 2019 but was asked by the Examiner to change the trademark type to device mark in the Examination.

This take of Indian Trademark Registry in treating store layout as device mark and not a 3D mark is atypical compared to other jurisdictions that have been protecting store layouts as three-dimensional trademarks.

In India, Section 2(1)(zb) of  the Trade Marks Act 1999 provides for certain conditions that must be fulfilled for a mark to be registered as a trademark, which are

“a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours; “

Section 9(3) of the Act specifies that a mark shall not be registered if it consists of following

(i) the shape of goods which results from the nature of goods themselves, or

(ii) the shape of goods which is necessary to obtain a technical result, or

(iii) the shape which gives a substantial value of goods.                        

From above definitions, the three essentials of a trademark that comes out are:

·         Graphically Represented

·         Distinctiveness

·         Functionality

Store layouts consist of several elements that form part of a trademark, the drawing or photographs are just the pictorial representation of actual layout, thus measurements and exact sizes are difficult to be ascertained. Consequently, a particular layout may monopolise all sizes and forms of particular design this is particularly true in India wherein store layouts are registered as a device mark.

However, this issue would be easy to overcome if the trademark is applied as a three-dimensional mark since the applicant is required to submit differently perspectives and features of the trademark, accompanied by an accurate description.

Further, the essential function of a trademark is to identify the source or origin of goods or services, therefore, a common objection received from the Indian Trademark Registry on applications for registration of store layouts is usually that the mark is not inherently distinguishable or that it cannot be distinguished from other layouts. The main concern that arises is to establish that the consumer could associate the commercial origin of the trademark, same concern was raised by the DPMA when Apple applied for registration of the store layout of its Flagship store in their jurisdiction under Madrid, the DPMA refused the grant, the Court of Justice of the European Union (CJEU) however in Apple Inc. v Deutsches Patent-und Markenamt^[1] held that Apple’s layout was eligible for trademark protection in the EU because the layout was constructed using a collection of lines, curves and shapes, which constitutes a distinguished representation of the store on paper and thus it had features which distinguished it from other layouts.

Thus the level of distinctiveness that proprietor of such trademark has to establish is quite high, usually, if the layout is well-known among the consumers or have obtained secondary meaning it is easier to overcome an objection.

The next, a most important test of trademark especially in case of store layouts is that the constituent features of a trademark must not perform an important function. This is to safeguard against granting monopolies over functions. Thus any design, part or layout that is essential to the services provided therein cannot be protected under the store layout trademark.

Thus the Act alone cannot become the guiding torch for registration of non-conventional trademarks especially store layout, since this is a fairly new concept in India, a lot of issues remain unexplored. It will be interesting to note how Courts will deal with the issue of trademark being applied for registration as a device mark and not three-dimensional marks when posed with such issues.

*Images used for representation purpose only, No copyright is claimed on the images used in the article