The Court of Justice of the European Union (CJEU) has ruled that it may be possible for a retail store layout to be registered as a trade mark.  

The ruling in Apple Inc. v Deutsches Patent-und Markenamt arose out of a dispute between Apple and The German Patent and Trade Mark Office (DPMA) in which the DPMA refused Apple's application to register the design of its flagship store layout as a trade mark.

Apple had already successfully registered a design for its flagship store as a 3D mark in the US. Its registration covered services in Class 35 of the Nice Agreement, namely 'retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto'. Apple sought to extend its protection internationally but its application in Germany was refused because the DPMA did not think that the consumer would see the layout of a retail space as an indication of commercial origin and therefore in its opinion, the mark was not capable of registration.

Apple appealed to the German Federal Patent Court – the Bundespatentgericht – which considered that Apple's layout had features that distinguished it from the usual layout of retail stores, but wished to seek clarification on various points from the CJEU before reaching a final decision.

The CJEU (applying the standard test for determining whether subject-matter is capable of constituting a trade mark) held that:

  • 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
  • in reaching the above conclusion it was not necessary for the representation of Apple's store layout to contain any indication as to the size and proportions of the retail store it depicts
  • whether the representation (sign) in question lacks distinctiveness or is descriptive (and hence not registrable) must be assessed on a case by case basis. The assessment criteria that must be used to determine this does not differ from those used for other types of sign
  • provided that none of the grounds for refusing registration preclude it, a sign depicting the layout of the flagship store of a goods manufacturer may legitimately be registered not only for the goods themselves but also for services where those services do not form an integral part of the offer for sale of those goods – in Apple's case, its application included the carrying out of in-store demonstrations by means of seminars of the products on display.

In summary it appears that the CJEU has confirmed that a design for a retail store layout can, in principle, be registered as a trademark, provided that none of the usual grounds for refusing registration do not preclude it. Although it raises no new principles of law – indeed the CJEU has made it clear that the usual legal tests and analysis will apply – it is an interesting decision as it is the first time the concept of registering store layouts as trademarks has been approved in principle by the CJEU.  

The decision is likely to be viewed favourably by retailers who consider their distinctive store layouts to be part of their 'brand' and wish to protect that.

Apple’s case will now be referred back to the German court for a ruling on the specific facts.