Nabarro IP team wins new brand protection for shopping centres

In a High Court ruling handed down on 25 July, Nabarro IP lawyers Eesheta Shah and Guy Heath secured an important victory for three of the country's biggest shopping centre owners: Land Securities, Hammerson and Capital Shopping Centres. They persuaded the Court to overturn restrictive UK trade mark registration practice, which had routinely refused to recognise that shopping centres use their brands in providing a definable service to the general public as well as their tenants.

The ruling paves the way for shopping centre owners to obtain valid trade mark protection for their valuable brands in a way that best reflects how they use them, giving them better powers to deal with infringement.

The case reflects a recognition that shopping centres have become powerful brands in their own right. According to the High Court:

"It is clear… that shopping centres are increasingly branding their activities. Consumers have a choice as to the shopping centre to which they will go and at which they will spend their money, and they will distinguish between them by use of the shopping centre's brand."

The key point in the case was to establish that shopping centres provide shoppers with a service that should be recognised in legal terms. (This was necessary because trade mark rights are allocated by reference to the goods or services for which the trade mark is used. Unless a commercial service can be identified, the trade mark cannot be registered.) Until recently, a similar problem beset retailers, who were refused protection for their retail brands on the same basis. It ultimately took a ruling of the European Court of Justice to establish across Europe that retailing involves a recognisable service for which trade marks may be registered.

Success in the present case came because Nabarro persuaded the High Court that what shopping centres do for the shopper is, although not the same as, similar in many ways to what a retailer does. Like the retailer, the shopping centre owner has a commercial interest to protect. The Court held:

"The “transaction” which the shopping centre is encouraging by use of its mark is… the conclusion of transactions within its shopping centre as opposed to that of its rival shopping centres. In order to encourage that transaction the shopping centre operator does all he can to 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."

Eesheta Shah comments: “The ruling is welcome news for the sector because it helps protect the significant equity being built up in what are now some of Britain's most prominent brands.”

Richard Arnold QC of 11 South Square, instructed by Nabarro, appeared as counsel on behalf of the shopping centre owners.