The recent Court of Justice of the European Union (CJEU) ruling in Apple Inc. v Deutsches Patent- und Markenamt has confirmed a three-dimensional representation of a shop layout is capable of registration as a trade mark.

Background

In November 2010, Apple Inc registered, in the US, a three-dimensional trade mark consisting of the representation of the distinctive design and layout of their flagship retail stores for retail store services. The services covered consisted of services aimed at inducing the consumer to buy Apple Inc products, such as product demonstration seminars.

Apple Inc sought to extend their trade mark internationally but this was met with resistance in some EU member states. One such country, Germany, denied the extension to German territory on the basis that although buyers of Apple Inc products may feel the specific layout of the store points towards the quality of the product, consumers would not see it as an indication of their commercial origin and the store layout was not distinct from the stores of other retailers of electronic products.

Apple Inc appealed the decision. The Federal Patent Court of Germany held that the three-dimensional trade mark did in fact have features that were distinct from others in the same sector.  However, the court referred the following four questions to the CJEU.

  1. Does protection for the ‘packaging of goods’ extend to the presentation of the establishment in which a service is provided?
  2. Under Articles 2 and 3(1) of the Trade Marks Directive (2008/95), is a sign representing the presentation of the establishment in which a service is provided able to be registered as a trade mark?
  3. Can Article 2 of the Trade Marks Directive (2008/95) be interpreted to mean 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 of Trade Marks Directive (2008/95)  to be interpreted as meaning that the scale of the protection afforded by a trade mark for retail services also extends to the goods produced by the retailer itself?

CJEU Decision

In answering the first three questions collectively, the CJEU referred to the three conditions within the Trade Marks Directive (2008/95) that need to be satisfied in any application for trade mark registration: the subject matter must be a sign, the sign must be capable of graphic representation and the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The CJEU affirmed 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.  However, it was noted that although a sign of this nature can constitute a trade mark, a sign may not necessarily have the distinctive character in relation to the products or services for which registration is being sought. The distinctive character of the sign must be assessed by reference to the products and services in question and the perception of them by the relevant public.

The CJEU concluded that the representation of a retail store layout, by design alone, is capable of registration as a trade mark for services in which those services relate to goods but which is not an integral part of the offer for sale of those goods, provided the sign is capable of distinguishing the services of the applicant from other undertakings.

The court found the fourth question was not relevant to the issues and declined to answer it.

Comment

Retailers using distinctive branding techniques, as Apple Inc. notably does in its shop layout, may now apply to register their shop layouts as a trade mark provided that their form of branding is significantly distinct from other retailers in the same sector.

Retailers wishing to develop a “signature” store layout, or for those whom already have distinctive store layouts, should consider registering their uniquely recognisable store designs to afford themselves proper legal protection.