A recent decision of the European courts has determined that retail store layouts are capable of trade mark protection.

Apple obtained a trade mark for the layout of its stores in the US and more recently sought to extend the US trade mark internationally. Trade mark applications for the store layout were made across Europe and accepted in some jurisdictions but refused in others, including in Germany. Apple challenged the German trade mark registry’s decision and the case was referred to the Court of Justice of the European Union.

The European court ruled in Apple's favour and found:

  • It is possible to register the design of the layout of a retail store provided that the design is capable of distinguishing the services of the trade mark applicant from those of other businesses and that the mark also meets all other requirements for registration.
  • A design of the layout of a retail store is capable of distinguishing the products or services of one business from those of other businesses if it significantly differs from the normal or customary layout of a store in the relevant business sector.
  • Provided the conditions above were satisfied, the court found that the design and layout of flagship stores of a goods manufacturer could be registered not only in respect of the goods themselves but also for services, even where those services do not form an integral part of the offer for sale of those goods.  The example of services given in the Apple case included the carrying out of in-store demonstrations of display products.

The ruling is likely to encourage other businesses to apply for a trade mark of their store layouts. Brand owners in the food and beverage sector may find it easier to take action against former franchisees that have de-branded but continue to trade in copycat establishments.

The possibility of trade mark protection for distinctive layouts of commercial establishments offers an additional level of protection where brand owners might previously have been forced to rely on the law of passing off to take action against copycat establishments.