A recent decision by the European Court of Justice (ECJ) has opened the door to retailers to protect the layout of their stores as registered trade marks.

Background

In 2010, Apple sought protection for a trade mark for its store layout in the US.  The application was filed in class 35 for “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”.   The US application was successful.   Apple then sought to extend the trade mark protection for its store layout via the International Registration System.

The application came first before the German Registry and it rejected Apple’s application on the grounds that (a) consumers would not consider the mark to indicate the origin of the goods associated with Apple’s stores and (b) it was not sufficiently distinguishable from the stores of other retailers of electronic goods.

Apple appealed the Registry’s decision to the German Appeal court which, in turn, referred a number of questions to the ECJ.

Guidance from the ECJ

The ECJ has now confirmed that a 3D representation of a store’s layout may be registered as a trade mark.  It held that the design of a store may constitute a ‘sign’ which is capable of distinguishing the goods and services of one retailer from those of another retailer.

The ECJ guidance will now need to be interpreted by the Trade Mark Registry in Germany.  Whilst the ECJ’s judgment underlined the need for the layout to be distinctive and to depart significantly from standard store layouts in order to qualify for protection, it is likely that the German Registry will grant Apple protection for its layout.

The way forward

The decision marks a significant development for retailers which rely on novel aspects of their store layouts to attract custom.  As retailers are increasingly using innovative store layouts as a market differentiator, they may now be rewarded for their investment in the form of trade mark protection.

It will be interesting to see whether any other retailers follow Apple’s lead to try and secure trade mark protection for their store layouts. Crucially, however, it will also be interesting to see how the courts consider such trade marks in any infringement proceedings and the scope of protection afforded by such marks.