Land Securities Plc & Ors v The Registrar of Trade Marks

Services are registrable under the Trade Marks Act 1994 if they are of a kind normally provided for remuneration. Separate invoicing, or payment directly by the person receiving the benefit, is unnecessary. A shopping-centre operator may provide services by selecting and managing a range of outlets and facilities, creating an attractive destination and generating goodwill under its mark. The services need not be described with excessive detail, but the specification must clearly identify their nature and permit the scope of the monopoly to be understood. Distinct objections to vague peripheral wording should generally be addressed by amendment rather than refusal of the application as a whole.

Three appeals concerned applications by shopping-centre operators to register marks for Class 35 services involving the bringing together of retail outlets, entertainment, restaurants and other facilities in physical or virtual shopping centres. The Registrar, acting through Mr Nathan Abraham, refused the applications on the grounds that the claimed activities were not services within the applicable legislation and that the specifications lacked clarity under rule 8(2)(b) of the Trade Marks Rules 2000.

The High Court considered whether the claimed activities were services, whether they were normally provided for remuneration, whether shopping-centre operators provided them, and whether the specifications clearly indicated their nature.

1. The appeals were allowed and the applications were remitted so that the specifications could be limited to meet the findings in the judgment.

2. Under the Trade Marks Act 1994, read consistently with the Trade Marks Directive, registrable services must be of a kind normally provided for remuneration. The court applied the reasoning in Praktiker Bau- und Heimwerkermärkte AG, Case C-418/02, [2005] ECR I-5873. The requirement is directed to the character of the activity, not to a particular method of payment.

3. An activity may satisfy the remuneration requirement even though it is not separately invoiced. Nor does it cease to be a service because the payment is made indirectly, or by someone other than the person receiving the immediate benefit. The shopping-centre operators’ activities were commercial and were not provided on a purely disinterested basis.

4. A shopping-centre operator provides services when it brings together retail, restaurant, entertainment and other facilities, supplies common services and creates an attractive destination intended to encourage customers to spend money in the centre rather than elsewhere. The operator may generate goodwill associated with the centre’s mark, so the mark can distinguish the operator’s services and indicate their origin.

5. Rule 8(2)(b) of the Trade Marks Rules 2000 requires a specification to indicate clearly the nature of the goods or services and to permit classification. The remuneration question and the clarity question are distinct. The core wording was sufficiently clear, but phrases such as “other services” and “such facilities” were too broad or imprecise. Those objections concerned the fringes of the applications and were capable of correction. They did not justify refusing the applications as a whole.

6. A reference to the European Court of Justice was unnecessary. The guidance in Praktiker Bau- und Heimwerkermärkte AG was sufficiently general to resolve the issues without the expense and delay of a reference.

• Registrar of Trade Marks: Mr Nathan Abraham refused the applications on the grounds that the claimed activities were not registrable services and that the specifications failed to comply with rule 8(2)(b) of the Trade Marks Rules 2000.
• High Court (Patents Court): The appeals were allowed. The cases were remitted for the specifications to be limited in accordance with the judgment.