An Update On The Intellectual Property Protection For The Concept Store – Intellectual Property

An Update On The Intellectual Property Protection For The Concept Store – Intellectual Property

In a recent case involving two leading cosmetics brands, the
Italian Supreme Court has confirmed that interior design works can
be protected by copyright if certain conditions are met, such as a
unitary design, a clearly defined and visually noticeable pattern,
a clear stylistic key and the personal imprint of the author.

The idea of “concept store”

The idea of visual merchandising has started to spread in recent
years and refers to the way of presenting goods in the stores -
especially in relation to the preparation of the shop windows – in
order to attract the customer’s attention. The focus of the
entrepreneurs has gradually shifted from the single product to the
environment in which the purchasing processes are generated, so as
to ensure the customer the most pleasant and comfortable conditions
to choose the product of interest.

The internal appearances of modern shop fittings are
interconnected with the perception of the public, who is accustomed
– particularly in shopping malls – to open commercial spaces, that
is, without formal areas of entrance, which invite the customer to
access the store.

Many brands have exploited the influence that the place of
purchase has on customers and have invested in the creation of
shops with noticeable characteristics that allow customers to
recognize the brand only by the shops features. This marketing
strategy grants brands to be recognizable all over the world and to
create an image identity that stands out for the customer and
favours the association of the layout of the store with the brand
itself.

The more original the store appearance is, the more impact it
has on the customer.

Concept store protection: design, trademark
and…copyright

The protection that a concept store can take advantage of is
paramount. Up to now, the most used method has been design – both
registered or not – that aims to protect the element of novelty.
The registration of a design has a duration of five years from the
application and can be extended for periods of five years, up to a
maximum of 25 years. In this regard, it should be noted the
existence of the institute for the protection of non-registered
design, which gives protection to forms with novelty and individual
character with a three-year protection that starts from the first
qualified disclosure of the design itself.

However, the temporary nature that characterizes the design led
entrepreneurs to focus on other types of wider protection. In this
perspective, the CJEU decision (C-421/13) in Apple v. DPM (German
office for Trademarks and Patents) comes to mind. In that case,
Apple was arguing (and was found to be right) that the layout of
its stores should enjoy trademark protection. The Court specified
that the representation, by a design, of the layout of a retail
store is also capable of distinguishing the products or services of
one brand from those of another one. In fact, the condition for
registration as a valid trademark of a concept store is that it has
a distinctive capacity: the public is able to connect it, uniquely,
to a specific brand and its products and services.

Trademark protection is the broadest that can be achieved, since
it is potentially everlasting and it is worth underlining that
design and trademark are cumulative protections, therefore nothing
prevents the entrepreneur from availing of both.

Nevertheless, a further type of protection can been activated in
order to protect the concept store: the copyright. The protection
of copyright has a much longer duration (70 years post author
demise) than the design. This type of protection is recognized once
both the creative element of the work and its artistic value are
present and the personal imprint of the author is evident. In
addition to its possible combination with design, a unique feature
of copyright is the lack of registration costs, as this type of
protection arises along with the mere creation of the work. On the
other hand, precisely because of the lack of a formal registration,
copyright poses uncertain access conditions and it may be necessary
– in order to remove any doubt – that it is judicially
ascertained.

Kiko V. Wycon: the copyright protection

With regard to the protection of the concept store through
copyright, the Italian Supreme Court had the final say on the
long-standing dispute between two leading cosmetics brands – Kiko
Makeup Milano and Wycon – that had wide media coverage over the
last few years.

In 2005, Kiko decided to invest ?70,000 in a remodelling
project, which completely changed the appearance of its shops.
This, in order to stand out from the crowd and create the so-called
“concept store”, with the aim to realise a new,
innovative and highly characteristic layout. However, since 2009,
Wycon allegedly started acting unfairly by copying every aspect of
Kiko’s shops, setting up a systematic unfair competition both
confusing and parasitic, which resulted in an improper association
with Kiko’s shops for the adoption of its characterizing
elements. Despite already having registered its concept store as a
design, Kiko decided to take legal action in order to get the
copyright on the layout of its shop recognized. It is worth
underlining that Kiko already tried to get its concept store
protected as a trademark, but it did not succeed for lack of
distinctive character, as stated by EUIPO in its decision in
2016.

With decision no. 11416/2015, the Court of Milan recognized that
Kiko’s project of interior furnishing was protected under art.
2, no. 5 of the Law on Copyright, since the necessary elements of
creativity were detected, combined and coordinated with each other
(the existence of a specific study and design elaboration by a
third party constituted a favourable presumption in this regard).
The Court, in fact, held that originality lies on the subjectivity
of an idea and how it is expressed: in this specific case, both of
them were not imposed by the technical problem that the author
wanted to solve, such as to make the architectural project original
and creative.

The Court quantified the damages suffered at ?700,000 (tenfold
the amount paid by KIKO for the realization of the project) and
ordered the publication of the judgement on one of the most
widespread newspapers in the country.

After confirmation at the appeal, the Supreme Court intervened
last April 30 to define the matter. With decision no. 8433/2020,
the Italian Supreme Court focused on the objection raised by Wycon,
that the interior of a concept store cannot be protected as a work
of architecture. The grounds were deemed unfounded and the Court
pointed out that a project or a work of interior design can be
protected as a work of architecture, pursuant to art. 2, no. 5 of
Law on Copyright on the condition that it contains an original
element or it is a combination result of creativity. In the
Court’s opinion, Kiko’s interior design project reveals a
clear ‘stylistic key’, of individual components organized
and coordinated to make the environment functional and harmonious,
i.e. the personal imprint of the author: a unified design, in a
visually noticeable pattern.

Nevertheless, the Court also scored some points in favour of
Wycon. As regards the liquidation of the damages, the Court
annulled the precedent decision and referred the case back to the
Court of Appeal for an equitable quantification of the damages
suffered, since the liquidation of ?700.000 was deemed completely
arbitrary.

Tips on how to invest in a concept store

Therefore, which advice should entrepreneurs consider before
investing in the creation of a concept store?

Taking into account the necessary protection that they should
provide to the concept store itself – in order not to have it
copied by other brands – it is extremely important to focus on an
original project. Novelty, creativity, artistic value and the
distinctive elements should be met, if a brand wants to obtain the
widest protection. Offering customers a complete shopping
experience, wherein the interior layout of the shop is of crucial
importance nowadays, requires noticeable characteristics, made of
innovative features for the sector involved. Providing customers
with brand new visual elements assures a distinction from other
brands’ shops and avoids customer confusion, leading
entrepreneurs to a stronger marketing position.

Originally published 27 May 2020

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

I'm business helper , i have 20 year experience in business management sector. I help many business owners to grow business. My passion is helping fellow entrepreneurs and small business owners succeed.

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