The CJEU has confirmed that a retail store design may be registrable as a trade mark. The case concerns an application by Apple to register a representation of the layout of one of its stores for "retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products thereto" in class 35. The application, which has been registered in the USA, was rejected by the DPMA (German Patent and Trademark Office) following a subsequent International Registration because it was held that consumers would not consider the layout of a store as an indication of trade origin.
The German Federal Patent Court referred four questions to the CJEU, seeking guidance as to whether the Trade Mark Directive (Directive 2008/95) should be read as allowing depictions of store designs and layouts to be registered as trade marks and, if so, whether such depictions should include dimensions indicating the size and proportion of the design.
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, as it is a sign which is capable of graphical representation, regardless of whether it contains any indication as to the size and proportions of the retail store which it depicts. In addition, such a sign is capable of distinguishing the products or services of one undertaking from those of other undertakings, for example where the depicted layout departs significantly from the norms or customs of the economic sector concerned.
However, in order to be registered such a sign must in fact enjoy a distinctive character by reference to the goods or services in question and the perception of the relevant public, which is for the national court to determine.
The CJEU reiterated that the criteria for assessing the distinctive character of this type of sign do not differ from those for other signs (with the exception of signs consisting of the shape of goods, which are subject to additional criteria).
While this decision does not depart from established trade mark law, its importance is in the CJEU's acknowledgment that the layout or design of a retail store may be seen by consumers as an indication of origin.
The full judgment can be accessed here
Case C-421/13 Apple Inc. v Deutsches Patent- und Markenamt