Branding of Shopping Mall Services Allowed

Following a High Court ruling last year, the UK-IPO is now accepting the registration of trademarks for shopping mall services, including virtual shopping malls.

The ruling in Land Securities plc and Ors. v The Registrar of Trade Marks ([2008] EWHC 1744 (Pat) ) recognises that shopping mall operators provide services under brands in their own right.

The new practice sets out the guidelines for securing trademark protection for real-world and virtual shopping mall services. Under it, shopping mall operators may apply to protect the names and logos associated with shopping centres in respect of “the bringing together for the benefit of others, of a variety of retail outlets, entertainment, restaurant and [other clearly defined related services], enabling customers to conveniently view and purchase goods and make use of and purchase such services in a shopping centre or mall.”

Virtual malls can use similar wording, namely “the bringing together for the benefit of others, via the Internet, of a variety of retailers and [other clearly defined related services], through a virtual shopping mall, enabling customers to conveniently view and purchase goods and make use of and purchase such services by means of telecommunications.”

Centralised shopping is on the rise in both the real and virtual world, and the competition for customers in such centres is as important as the competition in the actual stores. Branding and advertising is therefore of key importance to a shopping mall’s success. The new practice recognises this and enables U.K.-based shopping mall operators to obtain protection in their home market and thus avoid the risk of non-use vulnerability arising from geographically restricted activities.

Applicants for mall services must still specify any supporting services that they wish to protect, such as crèches, coat check, car parking, toilets, etc. This should, however, present no great challenge in most case, and is a small price to pay for the benefit of local protection for what is effectively a local service.

For advice on whether the new practice merits a new filing for your retail business, please get in touch with the Trademarks Group at Jenkins.