In a landmark decision, the Court of Justice of the European Union (CJEU) has confirmed that it is possible, in principle, to register a 3D trade mark for the design of a retail store. This decision is the first time the design of a retail store has been held to be capable of functioning as a trade mark (Apple Inc v Deutsches Patent-und Markenamt  C-421/13). The decision shows the CJEU's willingness to recognise new non-traditional marks as trade marks.
Apple successfully registered a US trade mark for the three-dimensional representation of the layout of its flagship store. The trade mark consists of a collection of shapes, lines and curves without any details of dimensions. It was described by Apple as 'the distinctive design and layout of a retail store'.
Apple then tried to extend the registration internationally with varying success. One country which refused the registration was Germany. Apple appealed the refusal and the case was referred to the CJEU.
The CJEU held that:
- the design of the layout of a retail store may be registered as a trade mark provided the sign is capable of distinguishing the products or services of one undertaking from those of other undertakings; and
- the representation by a design of the layout of a retail store is capable of distinguishing the products or services of one undertaking from those of other undertakings. This could be the case when the depicted layout departs significantly from the norm or customs of the economic sector concerned.
However, the CJEU made it clear that, although such a representation is capable of functioning as a trade mark, it should only be registered if it is distinctive and not descriptive of the characteristics of the products and services concerned. The CJEU left these issues for the national court to decide.
This decision will be of interest to retailers who feel their store is set out in a unique manner and who spend significant money and time in designing their flagship stores to provide a 'signature' store layout.
Shell had previously succeeded in registering a community trade mark for the design of its petrol station forecourts (CTM number 011521994). Initially, Shell’s application was refused on the grounds that the mark was 'devoid of any distinctive character'. However, Shell provided evidence of use of its red and yellow design dating back to 1915, demonstrating that the colours of the forecourt design were easily identified as those of the Shell brand.
Shell made it clear that its application related to the 'the overall impression of a red and yellow vehicle service station', clarifying that 'the mark sought is not for the shape of the service station itself'.
The Apple store design mark is a step further in terms of trade mark protection because it represents the layout of the store using a collection of lines, curves and shapes and is not just relying on easily identifiable colours.
Apple will especially welcome the CJEU decision following the large number of fake Apple stores that are currently appearing worldwide, particularly in China. The copycatting is so prolific, and the replica stores so sophisticated, that a fake Apple store in Kunming, China, even managed to convince its own employees that they were working for the genuine article. This may go some way to help Apple put a stop to such behaviour.