Pisa of Mind for Store Designers: Italian Supreme Court confirms copyright protection for the layout of shops

June 17, 2020

3 min read

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What's going on here?

The Italian Supreme Court’s recent judgment of a dispute between two Italian cosmetic companies, Kiko and Wycon, is the latest case driven by the landmark Cofemel decision. It expands copyright law in Italy with a ruling protecting store experience as well as store design.

What does this mean?

In the case Kiko v Wycon, the older of the two manufacturers, Kiko Milano, claimed that its competitor had scrupulously copied every aspect of its store design. These claims related to the colour scheme, layout and spacing, decoration and product placement, as well as other aspects relating to the feel of the shop, which Kiko argued provided an original look and branding.

In deciding whether to issue trade dress protection, the Cofemel judgment (also covered in our article here) arrived at by the CJEU (Court of Justice of the European Union) in September 2019, proved to be a particularly useful precedent. The judgment set out two tests: firstly, that there must be “something original” and which is “an intellectual creation of its author”; and secondly that the “work” being analysed is easily and objectively identifiable. Additional requirements related to “artistic” and “aesthetic appeal” were removed as criteria.

What's the big picture effect?

The ability to trademark one’s retail store design is not a new phenomenon. For example, the European Court of Justice has been granting Apple stores protection from as early as 2014. However, both Cofemel and the actions of the Italian courts do say something about the ease of access and extent of trademark protections of this particular kind.

As the judgment was issued by the highest court in the EU, naturally this will impact the laws of its member states. However, regarding the position of the UK and its impending departure from the union, the long-term impact is substantially more complex. Although, it is interesting that the judgment has already been referred to in English courts, specifically the specialist Intellectual Property Enterprise Court. It was said to be administered with “complete conformity” in the case involving The Edinburgh Woollen Mill Ltd which suggests that these legal guidelines derived from this EU judgement may be here to stay.  

Moreover, this story also alludes to the growing importance of store experience for modern-day consumers. In an increasingly concentrated market also drifting towards online, it is more important than ever to enhance the shopping experience. Retailers, therefore, should be focused on enticing customers into physical stores in an innovative way, such as concept stores, to make finances spent on rent and wages for front-of-house staff economically worthwhile.

Using trademark protection to maintain competitive advantage creates more work for lawyers who specialise in IP. In the wake of the recent decision, lawyers may be asked to amend and increase the specificity of language used in contracts or other official documents to ensure that design protections hold up in court. Additionally, if a retailer has multiple international outfits, particular attention must be paid to ensure uniformity across stores to ensure legal protection would be granted. For retailers interested in registering store trademarks, it is worth addressing that it can be a long and potentially expensive legal process. It also may not always be granted. It, therefore, remains to be seen how long Cofemel will last as a predominant test and how the retail sector will continue to grow and develop.

Report written by Katrina Hughes

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