All dressed up, but with nowhere to go?

Ap­ple’s suc­cess­ful bid to reg­is­ter its store lay­out as a trade­mark may fly in SA

Business Day - Business Law and Tax Review - - FRONT PAGE - GAE­LYN SCOTT

IT’S been well re­ported that Ap­ple has man­aged to get a US trade­mark reg­is­tra­tion for the lay­out, or in­te­rior de­sign — the look, if you like — of the Ap­ple store. What this means is that Ap­ple has ex­clu­sive rights to this lay­out, or in­deed any con­fus­ingly sim­i­lar lay­out, in the area of stores sell­ing elec­tronic goods.

A di­a­gram forms part of the reg­is­tra­tion and there is ap­par­ently a de­scrip­tion which ex­plains that the lay­out com­prises var­i­ous things, in­clud­ing “a clear glass store­front sur­rounded by a pan­elled façade... rec­tan­gu­lar re­cessed light­ing units within the store... can­tilevered shelves be­low the re­cessed dis­play spa­ces... rec­tan­gu­lar ta­bles ar­ranged in a line in the mid­dle of the store par­al­lel to the walls and ex­tend­ing from the store­front to the back of the store... multi-tiered shelv­ing along the side­walls... an ob­long ta­ble with stools lo­cated at the back of the store, set be­low video screens flush mounted on the back wall.”

Some say that Ap­ple’s mo­ti­va­tion for get­ting this reg­is­tra­tion was to deal with copy­cat stores in its largest mar­ket, China. Although the reg­is­tra­tion only cov­ers the US, there are ap­par­ently plans to seek reg­is­tra­tions in var­i­ous other coun­tries on the ba­sis of the US reg­is­tra­tion. Oth­ers say that Ap­ple is con­cerned about the fact that Mi­crosoft stores look sim­i­lar to Ap­ple stores. What­ever the rea­son, it’s not hard to un­der­stand why Ap­ple would want a reg­is­tra­tion like this.

But it was the very fact that Ap­ple was able to get a reg­is­tra­tion of this na­ture that sur­prised many peo­ple.

But is it really that rad­i­cal — if some­thing like a colour or a shape can func­tion as a trade­mark for goods, isn’t it pos­si­ble that the ap­pear­ance of a store or other busi­ness premises can act as the trade­mark of a busi­ness that of­fers ser­vices?

And if shapes and colours can be reg­is­tered as trade­marks (it’s dif­fi­cult but it hap­pens oc­ca­sion­ally), why not store lay­outs?

The term “trade dress” is some­times used to de­scribe some­thing as neb­u­lous as a store lay­out.

Trade dress is specif­i­cally recog­nised in US trade­mark law and it is pos­si­ble to get a reg­is­tra­tion for it, although it very likely that you will need to prove that the lay­out has been used for a con­sid­er­able pe­riod of time, and that it has there­fore be­come dis­tinc­tive of your busi­ness. In­deed, in the case of Ap­ple, the au­thor­i­ties were not pre­pared to ac­cept that the lay­out was in­her­ently dis­tinc­tive, but they did ac­cept that it had be­come dis­tinc­tive as

the trade­mark of Ap­ple as a re­sult of use go­ing back to 2006.

In 1992 the US Supreme Court heard a case in­volv­ing trade dress and it held that a restau­rant chain, Two Pe­sos, could suc­cess­fully en­force its trade dress reg­is­tra­tion against a com­peti­tor. In that case, the lay­out was de­scribed as fol­lows: “A fes­tive eat­ing at­mos­phere... dec­o­rated with arte­facts, bright colours, paint­ings and mu­rals... ex­te­rior is a fes­tive and vivid colour scheme us­ing top bor­der paint and neon stripes... bright awnings and um­brel­las con­tinue this theme.”

So the sit­u­a­tion in the US ap­pears to be that trade dress can be reg­is­tered as a trade­mark if it is dis­tinc­tive — in­her­ently as it was in the Two Pe­sos case, or through use as it was in the case of Ap­ple — and pro­vided that it is pri­mar­ily non-func­tional. But does the same sit­u­a­tion ap­ply in SA?

It is im­por­tant to note that US trade­mark law is dif­fer­ent from ours, and that the US Supreme Court has said in a case that dealt with the reg­is­tra­tion of a sin­gle colour for goods (Quali­tex) that a trade­mark can be “al­most any­thing at all that is ca­pa­ble of car­ry­ing mean­ing”. But the def­i­ni­tion of a “mark” in the South African Trade­marks Act is also very wide: “Any sign ca­pa­ble of be­ing rep­re­sented graph­i­cally, in­clud­ing a de­vice, name, sig­na­ture, word, let­ter, nu­meral, shape, con­fig­u­ra­tion, pat­tern, or­na­men­ta­tion, colour or con­tainer for goods or any com­bi­na­tion of the afore­said.”

And, although we do fol­low the ap­proach of the Euro­pean courts, which is to say that a mark can­not be reg­is­tered un­less the graphic rep­re­sen­ta­tion is clear, pre­cise, in­tel­li­gi­ble, and durable, a lay­out could surely be rep­re­sented with some pre­ci­sion by way of di­a­grams and a writ­ten de­scrip­tion.

Even with­out a trade­mark reg­is­tra­tion, it might still be pos­si­ble to stop a com­peti­tor from us­ing a sim­i­lar trade dress through the com­mon law rem­edy of pass­ing-off. What you would need to do is show that your trade dress had ac­quired such a rep­u­ta­tion that the use of a sim­i­lar trade dress would lead to con­fu­sion.

In ef­fect, you might have to con­vince a court that if an or­di­nary cus­tomer were to walk into your com­peti­tor’s store with­out paying at­ten­tion, they might think they were in your store. But the cases don’t bode well. There was a case in the US where a com­pany called Happy’s Pizza Fran­chise un­suc­cess­fully tried to stop a com­peti­tor called Papa’s Pizza from us­ing a sim­i­lar trade dress on the ba­sis of its com­mon law or un­reg­is­tered rights. The court held that the trade dress was generic.

In the UK case of Jimmy Nicks, a claim re­lat­ing to a bar with a foot­ball sta­dium theme failed. And in SA we had the case of Spur Restau­rants v Sad­dles Restau­rants, where an un­law­ful com­pe­ti­tion claim failed be­cause the court felt that the lay­out had not been suf­fi­ciently clearly de­fined.

Trade dress is some­thing that you can per­haps pro­tect and en­force in SA. But, as with all other types of trade­marks, the more dis­tinc­tive (in­ter­est­ing and orig­i­nal) your trade dress is, the bet­ter your chances will be.

Pic­ture: THINKSTOCK

YOU’VE GOT THAT (REG­IS­TERED) LOOK...

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