The Court of Justice of the European Union (CJEU) has recently held in Apple Inc v. Deutsche Patent-und Markenamt that the representation of a layout of a retail store may be registrable as a trade mark under Articles 2 and 3 of the Trade Marks Directive (Directive 2008/95/EC).

Having successfully obtained a 3D trade mark from the United States Patent and Trademark Office, Apple sought to extend the scope of this mark internationally.  However, on 24 January 2013 the German Trade Mark Registry refused this extension on the grounds that the trade mark, which consisted of the representation of its flagship stores (in colour) for services within class 35 (retail store services featuring mobile phones, consumer electronics etc), depicted nothing other than the representation of an essential aspect of Apple's business.

Upon appeal, the Bundespatentgericht asked the CJEU whether the representation of the layout of a retail store, by a design alone, without any indication of size or proportions, may be registered as a trade mark for services aimed at inducing the consumer to purchase goods of the applicant for registration and, if so, whether such a presentation of the establishment in which a service is provided may be traded in the same way was packaging.  

The CJEU considered that the preliminary step when considering a sign for registration must be whether the sign complies with the three conditions in Article 2 of the Trade Marks Directive: (i) does it constitute a sign; (ii) is it capable of graphic representation; and (iii) is it capable of distinguishing the goods or services of one undertaking from another.

The CJEU held that Apple's mark depicted the layout of its flagship store by a means of an integral collection of lines, curves and shapes which distinguished its services from competitors in the consumer electronics sector. Therefore, the mark fulfilled the requirements of Article 2 of the Trade Marks Directive without any need to address its size or proportions.

However, the Court was careful to emphasise that a trade mark must have distinctive character to be capable of registration. When assessing distinctive character a Member State should review the sign by reference to the goods or services in question and the perception of the relevant public.

Comment

The decision makes it clear that for truly iconic store designs a retailer may be able to protect the look and feel of its stores providing it is capable of graphic representation and isn't an integral part of the offer for sale of those goods. The protection offered by a trade mark will provide retailers with greater brand protection and stronger grounds of enforcement against copycat competitors which aim to take advantage of a successful store layout when selling identical goods or services.

We do not anticipate that this decision will lead to a flood of trade mark applications for store designs. The CJEU was careful to note the iconic and truly distinctive nature of Apple's store design, a requirement that not every store layout would be able to meet.