On 10 November 2010, Apple obtained from the United States Patent and Trademark Office the registration of a three-dimensional trade mark consisting of the representation, by a design in colour (in particular, metallic grey and light brown), of its flagship stores for services within the meaning of Class 35.
That representation, described by Apple as ‘the distinctive design and layout of a retail store’, is as follows:
Click here to view image.
Subsequently, Apple sought to extend this trade mark internationally. That extension was accepted in some States and refused in others.
On 24 January 2013, the DPMA refused the extension of that three-dimensional international trade mark (IR 1060321) to German territory on the ground that the depiction of the space devoted to the sale of the undertaking’s products was nothing other than the representation of an essential aspect of that undertaking’s business. The DPMA considered that while it is true that consumers may perceive the layout of such a retail space as an indication of the quality and price bracket of the products, they would not see it as an indication of their commercial origin. Besides, it considered that the retail store depicted in the case before it was not sufficiently distinguishable from the stores of other providers of electronic products.
Apple appealed to the Bundespatentgericht against the DPMA’s refusal decision, who put forward preliminary questions to the Court of Justice of the European Union.
In its judgement of 10th July 2014 the Court (Third Chamber) ruled:
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 trade mark 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.