CURRENT PRACTICE AND SHOPPING CENTRE TRADE MARKS – BY VICKY STILWELL
A recent Practice Amendment Notice issued by the United Kingdom Intellectual Property Office raises some concern about the previous and seemingly current South African practice surrounding the description of services rendered by shopping centres when filing applications for registration of shopping centre trade marks.
The Practice Amendment Notice was issued as a result of the judgment of the UK High Court in the case of Land Securities PLC (and others) . In this judgment the court held 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 goodwill associated with the name or mark under which the shopping centre trades. To that extent, the shopping centre operator is providing services”.
In the Land Securities PLC case, there was an objection raised in respect of the opening section of the specification for the WHITE ROSE trade mark application in class 35, which read “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…”. The court ultimately held that the description was largely sufficient for the purposes of satisfying rule 8(2)(b) of the UK Trade Marks Rules (the UK equivalent to section 11 of the South African Trade Marks Act ), apart from the broad reference to “other services”, which was not acceptable.
Following the court’s comments in the Land Securities PLC case the UK Intellectual Property Office issued its Practice Amendment Notice in terms of which it stated that the following description of services would be acceptable for describing the services of shopping centre operators: “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”.
In the South African context, guidance and cognizance are frequently taken from UK court and Intellectual Property Office decisions and practice guidelines as well as UK legislation, and it is not inconceivable that the South African Trade Marks Registry and courts may take guidance from the decision in the Land Securities PLC case and the subsequent Practice Amendment Notice issued by the UK Intellectual Property Office.
The question therefore arises whether current South African trade mark practice surrounding the description of services rendered by shopping centre operators is in line with UK practice and whether it is in line with South African Law. It is submitted that this is generally not the case. In the case of many of the current applications and registrations on the South African Trade Marks Register for the better known South African shopping centre trade marks, the services are generally described as “retail, wholesale, selling, distributing, hiring, leasing, import and export services…”, “offering for sale and the sale of goods in the retail and wholesale trade” or along similar lines.
The next questions that arise are whether descriptions such as those mentioned above adequately and accurately describe the actual services rendered by shopping centre operators and whether registrations for shopping centre trade marks which specify such services are valid and enforceable. Once again, it is submitted that the answers to these questions are in the negative. If one considers the types of activities in which the operators of shopping centres are engaged, it is clear that these revolve primarily around providing attractive and convenient environments for customers to be able to access, view and purchase a variety of goods and services. The operators of shopping centres are not involved directly in retail or wholesale services, entertainment services, restaurant services or the like, or at least such services are not their primary focus. In general, these services are rendered by the tenants and other occupants in shopping centres and malls, and not by the shopping centre operators themselves. It is submitted, therefore, that the correct manner in which to describe the services rendered by operators of shopping centres is that expressed above in the UK Practice Amendment Notice, and that the practice should be adopted in the South African context.
With this in mind, it is not inconceivable that South African registrations for shopping centre trade marks, that do not correctly describe the services rendered by their proprietors, may be vulnerable to removal from the Register, either on the basis that they are not used in relation to the services listed in their specifications, as provided in section 27(1)(a) of the Trade Marks Act, or that they were registered without any intention on the part of the applicant that they should be used in relation to the specified services, as provided in section 27(1)(b) of the Trade Marks Act.
Although this argument has not, as far as the author is aware, been raised in a South African court to date, it would be interesting to see the outcome, if it were to be raised. It would also be prudent to ensure that the services rendered by shopping centre operators are correctly and accurately described in any applications for their trade marks in the future.
Vicky Stilwell is a senior associate at Bowman Gilfillan in the Intellectual Property Trade Mark Prosecution department.