On 10th July 2010, in the case C-421/13, the European Court of Justice has decided that the representation of the layout of a retail store can be registered as a trademark (under specific conditions).
The request for a preliminary ruling concerning the interpretation of articles 2 and 3 of Directive 2008/95/EC was introduced by the German Federal Patent Court (Bundespatentgericht), in the course of a dispute between Apple and the German Patent and Trademark Office (DPMA) regarding the registration of a three-dimensional trademark consisting in the representation of the brand flagship stores.
Apple had already successfully registered its trademark in the United States and sought to extent its protection at the international level. On 24th January 2013, the DPMA had rejected Apple’s request on the ground that this was nothing other than the representation of an essential aspect of its business and would not be perceived by consumers as indicating its commercial origin. It was also considered not sufficiently distinguishable from the stores of other providers of electronic products. On appeal, the Bundespatentgericht decided, after enouncing that these trademark features were indeed distinctive, to refer the question regarding the registration as a trademark of the representation of the layout of a retail store to the CJUE .
In the Court of Justice’s opinion, the three conditions set out in article 2 of the directive to be capable of constituting a trademark are fulfilled -: “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 provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings (…) without it being necessary either, on the one hand, to attribute any relevance to the fact that the design does not contain any indication as to the size and proportions of the retail store that it depicts, or, on the other hand, to examine whether such a design could equally, as a ‘presentation of the establishment in which a service is provided’, be treated in the same way as ‘packaging’ (…). The representation, by a design, of the layout of a retail store is also 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” (§ 19-20 of the decision).
Furthermore, the Court considers that a sign depicting the layout of the flagship stores of a goods manufacturer can legitimately be registered for goods as well as for services (§26 of the decision).
In conclusion, the Court decides that “articles 2 and 3 of Directive 2008/95 must be interpreted as meaning that the representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store, may be registered as a trade mark for services consisting in servicesrelating to those goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings and that registration is not precluded by any of the grounds for refusal set out in that directive”.