In January 2013, Apple Inc. obtained a trade mark registration in the USA for the following graphical representation of its flagship store layout:
Click here to view image.
The registration covers "retail stores services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto", and includes the description that "the mark consists of the design and layout of a retail store". It also describes some of the features of the layout, but did not contain any specific dimensions or measurements.
Apple applied to obtain corresponding registered protection (via the International Registration system) in a number of jurisdictions, mainly in Europe. This International Registration was accepted in some jurisdictions, but was refused protection in others - including in the UK and Germany.
Apple filed an Appeal against the refusal by the German Patent Office before the German Court, which referred the following questions to the CJEU for guidance:
- Is Article 2(i) of the Trade Marks Directive 2008/95/EC to be interpreted as meaning that the possibility of protection for the "packaging of goods", also extends to the presentation of the establishment in which a service is provided?
- Are Articles 2 and 3(1)(ii) to be interpreted as meaning that a sign representing the presentation of the establishment in which a service is provided, is capable of being registered as a trade mark?
- Is Article 2 to be interpreted as meaning that the requirement for graphic representability is satisfied by a representation of a design alone, or with such additions as a description of the layout or indications of the absolute dimensions in meters or of relative dimensions with indications as to proportions?
In short, the German Court was asking the CJEU whether Apple could register what it had obtained in the USA.
The CJEU has ruled in Apple's favour, and has stated that, in principle, a design (drawing) of the layout of a retail store (i) could be considered an adequate graphical representation of a trade mark, and (ii) could therefore constitute a registrable trade mark provided that, overall, it functioned as an indicator of the origin of the goods or services to the consumer. It therefore appears not to be necessary to include indications as to dimensions or measurements.
The CJEU has referred the matter back to the German Court for it to assess whether the mark is indeed deemed capable of distinguishing the services claimed in Germany. It will therefore be up to Apple to persuade the German Court that its store layout, as depicted in the application, is sufficiently distinctive (in other words that the features for which protection is sought are not purely functional, and that the depicted store layout departs from the norm or customs of the retail sector concerned). It will be interesting to see if the German Court accepts Apple's arguments.
This is the first indication from the CJEU that retail store owners can, in principle, obtain a registered trade mark in the EU for the layout of their stores. This is, however, subject to such layouts not being deemed to be purely functional, and also not being the norm or custom of the retail sector concerned.
If the retail store owner can satisfy those requirements, then this should provide them with an additional form of protection for their overall branding position. This is likely to be of particular interest to those retail store operators that have highly distinctive (or unusual) uniformed store layouts, especially if such layouts have been used for some time and it is possible to obtain registration on the basis of acquired distinctiveness through use.
It will also be interesting to see if Apple now try again to obtain registered status in those EU jurisdictions that originally refused protection (including the UK).