Can the layout be effectively protected?

The” trade dress ” of a store requires significant research and investment, and has become a distinctive sign in its own right that allows retail outlets to distinguish themselves from one another.

By what means can the design of a store be protected and the imitation of this design by third parties be sanctioned?

There is no specific protection for store fixtures in French law, unlike in other foreign laws (protection of the ” trade dress ” in American law or the ” passing off ” action in Anglo-Saxon law).

There are, however, different legal grounds for protecting store fixtures.

• Not very effective protection by trademark law

A decision of the Court of Justice of the European Union has provided some very interesting clarifications on the protection of store fixtures by the law of trademarks. The case concerned a three-dimensional trademark consisting of a multicolored design of the flag stores (” flagship stores “) of the APPLE sign (CJEU, July 10, 2014, C-421/13, Apple Inc. v. Deutsches Patent – und Markenamt).

The Court held that three-dimensional signs relating to the interior layout of a sales outlet can constitute trademarks like any other, provided they meet the conditions for protection.

To be eligible for trademark protection, a sign must be capable of being represented graphically and must be capable of distinguishing the goods or services it designates from those of other companies.

While the first condition can be easily met, the condition of distinctiveness of the trademark when it relates to the layout of a store is more difficult to meet.

French jurisprudence is often reluctant to grant trademark protection to such elements.

In a noteworthy decision, the Limoges Court of Appeal held that ” a trademark cannot, under penalty of diverting the law from its purpose, protect what is none other than the layout and interior decoration of a store” . In this case, the applicant alleged infringement of two three-dimensional marks representing an English pub-style bar arrangement. The registered form was considered to be descriptive of the services concerned. Such a solution was justified in particular by the functional aspect of the elements that appeared in the trademark (chairs, tables…) (CA Limoges, April 25, 2002).

Thus, the registered trademark must not be descriptive, and therefore cannot be registered for services that are inherent to the sale of goods. Thus, the interest of a trademark registration is even lessened.

Protection against imitation of a store design is therefore theoretically possible on the basis of trademark law, but in practice, the design registered as a trademark will have to differ significantly from the norm or habits of the sector concerned.

Moreover, the trademark will be protected for certain classes only, and trademark law will therefore not be able to sanction the imitation of the trade dress by a company that does not offer the same services.

• Infrequent recognition of design protection

The designers of store fixtures seek other bases of protection than trademark law and invoke in particular the right of drawings and models. Article L. 511-1 of the CPI states that the appearance of a product or part of a product can be protected as a design.

For a large part of the doctrine, this article would be an obstacle to the protection of a store’s layout or its decoration. However, case law recognizes the potential protection of store fixtures on this basis.

The Paris Court of Appeal has notably held that the definition of article L. 511-1 CPI ” includes in a broad acceptance any possible apparent form of an object provided that it is notably perceptible, identifiable and identified” (Paris Court of Appeal, May 23, 2008, n° 06-18.874).

In order to benefit from protection under design law, the designs must be new and have a unique character. Such conditions were met in the above-mentioned decision, since the Court considered that all the elements of the store’s interior layout (window, facade, restaurant area) were new and had a specific character (Paris Court of Appeal, May 23, 2008).

• On the basis of copyright, the need to prove originality and the imprint of the author’s personality

Most frequently, it is on the ground of copyright that the protection of a store’s design is sought. The plans and works of architecture benefit indeed from the status of works protected by the copyright (L. 112-2 of the CPI).

The designer of a store layout is therefore the owner of copyright on such a work, as long as it is original and expresses the personality of its author.

The protection of store fixtures could be restricted in accordance with the principle that ideas are not protected, but only the original form in which they are expressed. However, this obstacle can be circumvented as long as the layout elements are sufficiently concrete and precise.

Some decisions have indeed considered that the merchandising (staging) of the store, the circulation path of the customers, the materialization of the reserves and the positioning of the cash desk were protected by the copyright since these elements were concretized by precise drawings and plans. Moreover, the choices made for the creation of these elements bore the imprint of their author’s personality (CA Paris, October 26, 2005).

Judges then engage in very detailed analyses of the originality of the store design.

In this respect, the Paris Court of Appeal held, for example, that the lounges in the Ladurée stores bore the imprint of their author’s personality and should therefore benefit from protection by copyright based on the choice of layout involving a mix of styles, colors and decoration (CA Paris, March 3, 2017, n°16-038.93).

The originality of a store layout can also result from the combination of several elements that would be independently known. If the creator of a store layout proves that it is made up of a combination of choices (lighting, store organization) that stems from an aesthetic bias and a creative effort, he will be able to invoke his copyright to prohibit and sanction the reproduction or imitation of his creations (CA Douai, March 16, 2017, n°15-03.286).

• The use of unfair competition and parasitic action in the absence of a private right

In the absence of a private right on the layout of a store, a similarity in the presentation of a store can be a source of confusion between two competitors and justify an action for unfair competition. On the basis of article 1240 of the Civil Code, the designers of store fixtures can prove that the imitation of the elements of their fixture causes them damage. Still, it is necessary to specifically attest to the existence of particular investments in the choice of furniture and the development of the claimed layout (CA Paris, May 24, 2016, n°15-061.53).

A decision of the Paris Court of Appeal perfectly illustrates the conditions under which an action for unfair competition can be upheld by the judges. In this case, the repetition of an interior design (furniture, rods, similar layout) was considered as intended to awaken in the mind of the customers the memory of the counterfeit store, by creating the same staging of the sales area, likely to generate a risk of confusion (CA Paris, April 16, 2010, n°09-004.07).

Obviously, if it is demonstrated that the layout in question is regularly used within the sector concerned, or even simply commonplace, the takeover of the elements by a competitor is not likely to create confusion and is therefore not wrongful (CA Caen, 1st ch., sect. civ. et com., June 11, 2009, No. 08/00019; CA Paris, pole 5, ch. 5, November 13, 2014, No. 13/03253; CA Paris, pole 5, ch. 1, May 24, 2016, No. 15/06153).

Copyright protection and unfair competition actions appear to be the most effective remedies for protecting store fixtures and punishing their reproduction or imitation.