Apple Inc. requested extension of an international registration pursuant to the Madrid Protocol, based on a U.S. registration, inter alia to Germany. The mark is represented as follows:

Click here to view mark.

Protection was requested for retail services in class 35 as follows: “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”. The German Patent and Trademark Office (“DPMA”) rejected the requested extension on grounds of lack of distinctiveness. The Federal Patent Court, to whom Apple appealed, considered the requirement of distinctiveness to be met, but had doubts as to the registrability of the sign and doubted also whether Apple could obtain registration of the mark for retail services rendered in relation to its own goods. The Court referred the following questions to the Court of Justice:

  1. Is Article 2 Trademark Directive to be interpreted as meaning that the possibility of protection for the ‘packaging of goods’ also extends to the presentation of the establishment in which a service is provided?
  2. Are Articles 2 and 3 (1) Trademark Directive to be interpreted as meaning that a sign representing the presentation of the establishment in which a service is provided is capable of being registered as a trademark?
  3. Is Article 2 Trademark Directive to be interpreted as meaning that the requirement for graphic representability is satisfied by a representation by a design alone or with such additions as a description of the layout or indications of the absolute dimensions in metres or of relative dimensions with indications as to proportions?
  4. Is Article 2 Trademark Directive to be interpreted as meaning that the scale of the protection afforded by a trademark for retail services also extends to the goods produced by the retailer itself?’

The Court analysed the first three questions together. It considered that the mark, being a two-dimensional design, complied with the requirement of graphic representability in Article 2 Trademark Directive, without any need to indicate dimensions or proportions, and without it being necessary to examine whether the mark can be taken as equivalent to the “packaging” of goods:

[19] (…) Consequently, such a representation satisfies the first and second conditions referred to at paragraph 17 of this judgment, without it being necessary either, on the one hand, to attribute any relevance to the fact that the design does not contain any indication as to the size and proportions of the retail store that it depicts, or, on the other hand, to examine whether such a design could equally, as a ‘presentation of the establishment in which a service is provided’, be treated in the same way as ‘packaging’ within the meaning of Article 2 Trademark Directive.

The Court then referred to the requirements of distinctiveness and combined the outcome of the analysis in the following answer:

Articles 2 and 3 Trademark Directive to approximate the laws of the Member States relating to trademarks must be interpreted as meaning that the representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store, may be registered as a trademark for services consisting in services relating to those goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings; and, that registration is not precluded by any of the grounds for refusal set out in that directive.

One of the issues in the case was whether Apple would be able to obtain registration of the store layout for retail services rendered in relation to its own goods. The Court had raised that issue in the Hearing and answered as follows:

[26] In this regard, it must be held that, if none of the grounds for refusing registration set out in the Trademark Directive preclude it, a sign depicting the layout of the flagship stores of a goods manufacturer may legitimately be registered not only for the goods themselves but also for services falling within one of the classes under the Nice Agreement concerning services, where those services do not form an integral part of the offer for sale of those goods. Certain services, such as those referred to in Apple’s application and clarified by Apple during the hearing, which consist of carrying out, in such stores, demonstrations by means of seminars of the products that are displayed there, can themselves constitute remunerated services falling within the concept of ‘service’.

The Court added, in analyzing the fourth question, the following:

[28] As is clear from paragraphs 26 and 27 of this judgment, the Trademark Directive does not preclude the registration of a sign for services which are connected with the goods of the applicant for registration.

As regards the fourth question itself, with its peculiarly worded English version using the word “scale” (the original German used the word “Schutzumfang”, i.e.“scope of protection”), the Court declined to give an answer because the facts of the case, involving exclusively registrability on absolute grounds, did not provide any reason to raise or answer an abstract question as to the scope of protection:

[29] The question as to the scale of the protection granted by such a trademark, on the other hand, as Apple and the Commission have submitted, manifestly bears no relation to the subject-matter of the main proceedings, which are concerned exclusively with the refusal by the DPMA to register the sign reproduced in paragraph 9 above as a trademark.

[30] Consequently, in view of the Court’s settled case-law, according to which a request for a preliminary ruling from a national court must be rejected where it appears to be quite obvious that the interpretation of Union law sought bears no relation to the facts or purpose of the main proceedings, the fourth question must be declared inadmissible.

Remarks
The registrability of visual representations of the store layout, whether of so-called “flagship” stores, or of other establishments, such as restaurants etc., has led to long discussions particularly in Germany where there were differing opinions also within the German Patent and Trademark Office and the Federal Patent Court. The discussion revolved around two separate issues. First, there is the issue of registrability of such layouts as complex “signs”, which were often considered to lack in “unity” (and thus assimilated to colour composition marks). As regards such combinations, the Court had held in 2004, in Case C-49/02,Heidelberger Bauchemie, that colours or combinations of colours which are the subject of an application for registration as a trademark, claimed in the abstract, without contours, (…) may constitute a trademark for the purposes of Article 2 of the First Council Directive (89/104/EEC) of December 21, 1988 to approximate the laws of the Member States relating to trademarks where:

  • it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and
  • the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.

As regards registrability, the doubts of the Federal Patent Court appear understandable but inappropriate in the setting of the case: Apple was the owner of a U.S. 3D mark for the same services which served as a basis for the Madrid registration and thus the claim for protection in Germany. Under Article 6 quinquies of the Paris Convention, the German Patent and Trademark Office and the German Patent Court did not have the authority to challenge the mark because of its “form” – it must be accepted “as is” (tel quel). The Paris Convention issue did not appear to have been considered by the Court of Justice. The Court however found an easy solution: The mark is a “figurative” mark, even though claimed as a 3D mark, and devices such as the representation in the present case are registrable, without any need for more specificity, by description or otherwise. Naturally, the requirement of distinctiveness must be met, but here we know from the referring court that it appeared that this was not considered to be an obstacle.

The second issue was whether registration as a mark for retail services in class 35 may be obtained also for the proprietor’s own goods. Why the second question was ever raised in the present case is difficult to understand because an applicant will not claim protection for retail services limited to goods made by himself. Apple in the present case had a description of goods which fitted its own products, but did not limit the specification to its own goods. The reference of the Federal Patent Court sought to deal with that “non-issue” in its fourth question, but the wording was so opaque, focusing on “scope of protection” rather than “subject matter”, that the Court had no difficulty in dismissing the question as inadmissible. It made however an effort to address the issue of “own goods” anyway, and concluded that there was no obstacle to obtaining a service mark registration for retail services rendered in relation to the applicant’s own goods.

The debates concerning retail service marks are not concluded with this judgment, which addresses actually only a marginal point. The current debate centers on the question of what actually is meant with “retail services” and how they can be distinguished from other services (e.g., transportation of goods, insurance, etc.) and with the question whether and to which degree retail services relating to particular goods are similar to the goods when examining conflicts between marks. Case law is developing.

As regards the notion of “retail services”, the Court in this context makes another one of its sibylline statements, namely that these services must not be an “(…) integral part of the offer for sale”. The reason for this is clearer than the meaning of “integral part”: The sale of goods is not itself a service. Protection for the “sale of goods” may be obtained only by registering he mark for the goods in the goods classes. The issue may become relevant only once the registered mark must be used in order to be maintained, and the question then arises whether the mark was actually used for “retail services”.

As regards use issues, with the statements of the Court on the “own goods” question it appears settled that if after five years the trademark proprietor uses his retail services mark only for his own goods, this will be sufficient provide the use is genuine.

The Court decided another retail services issue the same day, in Case C-420/13, Netto Marken-Discount, a reference also made by the Federal Patent Court, on the same day as the present reference, which is the subject of a separate Report.