Apple Inc. v Deutsches Patent- und Markenamt (C-421/13)
In a recent ruling, the Court of Justice of the European Union (CJEU) has held that the layout of a retail store can be registered as a trade mark in the EU.
The decision stems from Apple Inc.’s German application for the mark shown, described as a 3D mark depicting “the distinctive design and layout of a retail store”.
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The application covered “Retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto”.
The German examiner raised an objection, stating that the mark was nothing other than the representation of an essential aspect of an undertaking’s business, and customers would not see it as an indication of commercial origin.
Apple appealed to the Bundespatentgericht (German Federal Patent Court), who decided to stay the proceedings and refer several questions to the CJEU about registrability of this type of unusual mark.
The CJEU held that a representation which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark, provided that it is capable of indicating commercial origin. There was found to be no specific requirement for the design to indicate the size or proportions of the retail store in order for it to be registrable.
The CJEU went on to find that the layout of a retail store could potentially be capable of indicating commercial origin, by distinguishing the products or services of one undertaking from those of another, particularly if the depicted layout departs significantly from the norm or customs in the economic sector.
Finally, the CJEU stated that, providing none of the grounds for refusing registration apply, a sign depicting the layout of the store of a goods manufacturer can be registered for services as well as goods, where those services do not form an integral part of the offer for sale of the goods.
The case will now go back to the Bundespatentgericht to issue a decision in light of the guidance from the CJEU. Following the guidance we already have on more traditional shape marks depicting goods or packaging, it seems likely that the mark will be seen to lack sufficient distinctiveness in itself. Apple would then need to demonstrate that consumers have been educated to see the store layout as functioning as a trade mark, and the mark has therefore acquired distinctiveness through use.