Practice Amendment Notice
PAN 01/09 - Issued 24 February 2009
This PAN affects examination and classification practice in relation to those specifications which request coverage in respect of the operation of a shopping centre or mall. It will be reproduced in the revised Examination Guide soon to be published on the Intellectual Property Office's website, in the section entitled "Retail, Wholesale and Shopping Centre Services".
8 Shopping Centre Services
In the judgement of the High Court in Land Securities plc (and others) (CH2008 APP 0278/0279/0281) it was recognised that the services provided by the operator of a shopping centre are those which "make the shopping centre as a whole an attractive place for the consumer to come and spend money. In that manner the operator generates a goodwill associated with the name or mark under which the shopping centre trades. To that extent, the shopping centre operator is providing services".
In reaching its decision, the Court focused on the following terms which made up the opening section of the specification in question:
"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;"
Having decided that the operator of a shopping centre or mall does provide a service within the meaning of the Trade Marks Act 1994, the Court then went on to consider whether the terms applied for are sufficiently clear for the purposes of satisfying rule 8(2)(b) of the Trade Marks Rules. Ultimately, the Court found that the majority of those terms did satisfy the relevant criteria, although objections were upheld against the references to "and other services" and "such facilities" on the basis that they are broad, non-specific and unclear (paragraphs 50-51 of the decision refer).
Based on guidance set out in this decision, the Registrar will accept the following specifications:
- 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.
- 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.
In the above examples, the reference to "other clearly defined related services" refers to those services which are conventionally offered within a shopping centre to complement the primary activity of providing retail outlets. To illustrate this point, the Court acknowledged facilities as child care, language assistance, car cleaning, restaurants and cinemas as being services typically provided within a retail environment (paragraphs 13 and 28 of CH2008 APP 0278/0279/0281 refer). It is important to emphasise that any reference to such services included as part of a wider shopping centre-type specification will not equate to a claim to the provision of those services per se. To illustrate this point, the Registrar will not consider a class 35 claim to "the provision of restaurant facilities" (where it is made as part of a wider claim covering the services of a shopping centre operator) to be the same as a claim to "restaurant services" which are proper to class 43.
It should also be noted that the specifications presented above do not exhaustively list the specific goods which are likely to be provided by outlets situated within the shopping centre or mall. Notwithstanding the fact that the listing of goods remains a requirement of more conventional retail claims, the Registrar does not consider it to be a necessary requirement in relation to claims for the operation of shopping centres and malls.
By contrast, applicants should note that the following example specification would not be accepted:
- The bringing together for the benefit of others, of a variety of retail outlets 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.
It is important to stress that the judgement in Land Securities did not focus on "the bringing together of services" per se, but only "the bringing together of services within a shopping centre or mall" (including the virtual type). As a consequence, specifications which involve the bringing together of services in some other manner will be judged on a case by case basis and referred to classification section where necessary.