Can I protect the appearance of commercial premises?

July 2021

As we always say, the vast world of Intellectual Property covers all kinds of issues and queries. There are several that we have been dealing with over the last few months on the blog, especially in relation to trademarks and patents; and, on occasion, about industrial design. Today the question is a little more peculiar: can I protect the appearance of my business premises?

The answer is: yes.

However, depending on the territory in which we find ourselves, the protection of the appearance of a business premises will be covered by different Intellectual Property figures.

Commonly what is usually protected by companies is the name of their products or services through a trademark, or the appearance of all or part of a product through a design; and using the figure of the patent when we are talking about an invention, but the appearance of a business premises (which is inevitably already linked to a trademark) is a slightly more complex issue.

In these cases, the consumer will have to detect a sufficiently high level of originality to relate the appearance of the premises to a particular brand. Put like this, it sounds simple, but imagine a clothing shop (for example) without a single brand logo, the appearance of the shop has to be sufficiently original and characteristic for us to recognize which brand it is, even without the presence of any distinctive sign. It is about protecting the ‘look and feel’ of the company’s premises.

One of the best examples to understand this modality is Apple. The American giant has managed to protect the look and feel of its premises through IP. Generally, we would all recognize an Apple shop even if there was not a single “apple” in the premises in question.

Other examples are Burger King, Zara or VIPS.

How is this appearance protected?

Trademark, industrial design (trade dress if we are in the USA) and even copyright, are some of the ways to protect the appearance of a business premises through the Intellectual Property modality.

The most common form of protection of all of them is the INDUSTRIAL DESIGN, as we are protecting the appearance of the premises in question as long as, as when we are talking about a product, the requirements of novelty and singularity are met.

However, this is not the only form of protection. Returning to the case of Apple, which first managed to protect the appearance of its premises in the USA through trade drees (a figure that in some ways is very similar to industrial design in Spain and Europe), in the European Union, as this figure does not exist, it tried to achieve this protection through a TRADEMARK.

Apple, Inc. case

This all arose as a result of a pre-judicial question that a German court, following Apple’s application to the CJEU to register the appearance of its commercial premises as a three-dimensional trademark. The American technology company sought to protect its common image in the numerous flagship shops it has around the world, claiming the colours: metallic grey and light brown.

Registration of this trademark was initially refused by the German court on the grounds that the representation of spaces intended for the sale of a company’s products is no more than the representation of the essential appearance of the shop/premises in question, and not a way for the consumer to perceive such a layout as an indication of the company’s business origin.

However, Apple appealed against this decision and sought the assistance of the CJEU in order to obtain a better interpretation of the Trademarks Directive (hence the preliminary ruling). In its judgment, the Court states that, in order to constitute a trademark, the subject matter of the application for registration must satisfy the three essential requirements:

(a) it must be a sign

(b) the sign must be capable of being represented,

c) and the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings, i.e. it must have distinctive character.

So far, nothing that is not already known. However, this is always in reference to goods and services, but it turned out that in the Apple case the Court found that the appearance of its premises fulfilled all of them, as the design of its flagship shops visually represents the layout of a sales space that truly differentiates Apple’s goods from those of other companies.

These are shops that have the same appearance (colours and layout) in which its electronic products are retailed.

However, the CJEU clarifies that this does not apply to every shop layout, but only to those that differ significantly from the norm or the most common usages, which will be the ones that have the “prize” of being eligible for registration as a trademark. That is to say, only those shop fittings that are genuinely distinctive in relation to the designated goods or services and are perceived as such by the consuming public can be registered as trademarks.

Finally, a brief mention should be made of COPYRIGHT. Cases such as the KIKO MILANO VS WYCON case is an example of this.

KIKO MILANO VS. WYCON Case

In this case, specifically the design of the KIKO shops, was considered an architectural work (protected by the Intellectual Property Law on the basis of copyright) because it has certain characteristic elements that are always the same; therefore, not only buildings are considered architectural works, but also certain interior design projects that express the creativity of the author.

The Italian Supreme Court had to settle this controversy: the design or concept of a shop deserves copyright protection as long as it expresses a minimum level of creativity.

Thus, a design (in this case relating to the appearance of a shop) can be protected through Intellectual Property when two requirements are met: (i) that the work is precisely and objectively identifiable, and (ii) that the design is original in the sense that it is an intellectual creation of its author (where he shows his creativity).

The design must be a specific form of expression, a well-defined interior design project, and not a series of abstract indications that could be modified according to the different contexts of use, i.e. the different structures in which the individual components are inserted”.

Conclusion

Therefore, if the requirements are met, whether we are talking about industrial design, trademark or even copyright, the appearance of a business premises can be protected by IP; however, this does not mean that it is an easy task and it is always advisable to consult an expert in the field.

Eduardo Zamora | Sara del Río.

Image: Philippe Yuan on Unsplash