A visually appealing store is a crucial asset for any business aiming to provide a consistent quality of goods and services across its stores1. These stores featuring a distinct theme design commonly seen on their signage, wall arts, overall décor etc. not only reflects a cohesive brand imagery of the business but also create a lasting impression on the customers, strengthening their brand recall value. Given the fact that the customers would likely to identify and associate such unique appearance of store layouts with a particular brand, brand owners around the world are proactively seeking protection over their store layouts in order to prevent unauthorized imitation by third parties and to avoid confusion in the market.

The Apple’s flagship store layout2 is a good example which was granted registration in the year 2013 as a three-dimensional (3-D) mark by USPTO bearing the description as “‘the distinctive design and layout of a retail store’”. Following its success in the US, when Apple pursued to extend the said registration in other jurisdictions through Madrid Agreement, the German Trade Marks Office (DPMA) refused the mark stating that the same cannot be seen as an indication of their commercial origin. The matter went on appeal before German Federal Patent Court which was later referred to the Court of Justice of the European Union (“CJEU”). The CJEU in Apple Inc. v Deutsches Patent-und Markenamt3 ultimately ruled in favour of Apple and held that a design depiction of the retail store's layout, without the inclusion of size or proportion specifications, may be registered as a trademark, so long as it satisfies the requirement of being capable of distinguishing the services of the applicant from those offered by other entities.

One of the significant cases which established a strong foundation for store layout trademarks in the United States was the case of Two Pesos v Taco Cabana4 wherein the United States Supreme Court held that the Mexican-themed trade dress of the Taco Cabana chain of restaurants was entitled to trade dress protection under Section 43(a)(1) of the Lanham Act. The court observed the principles of acquired distinctiveness need not be proven when the trade dress is inherently distinctive.

Unlike in US, there is no clear statute that defines “trade dress” in India. However, in India the trade dress is covered under the definition of “mark” under Section 2(1)(m) Indian Trade Marks Act, 1999 which also includes shape of goods, packaging or combination of colours or any combination thereof. In the case of Colgate Palmolive Co. v. Anchor Health and Beauty Care5, the Delhi High Court acknowledged the trade dress of Plaintiff’s COLGATE tooth powder and observed that “Colour combination, get up, lay out and size of container is sort of trade dress which involves overall image of the product's features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period”.

Lately, the Indian Trade Marks Office has observed a surge in the applications for store/service layout marks. While a number of these application have been initially refused on the grounds of non-distinctiveness, some have subsequently overcome by submitting detailed description of the trade mark, international precedents and evidence of wide use as seen in the following cases:

In the case of trademark application for MARY COHR Store Layout in class 44-