In a judgment from the Court of Justice, it has been held that the layout of a retail store may be registered as a trade mark in Europe.
Apple Inc has already successfully obtained a trade mark registration in the United States for a three-dimensional representation in colour of its stores for services within 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.'
The below representation is accompanied by the description 'the distinctive design and layout of a retail store.'
However, when Apple sought to extend the trade mark internationally, they encountered difficulties in Germany. The German Patent and Trade Mark Office (the DPMA) refused to allow the mark on the basis that the representation simply showed an essential aspect of Apple's business and consumers would not see it as an indication of the commercial origin of products. Further, the retail store depicted was deemed not sufficiently distinguishable from other stores providing electronic products.
Apple appealed to the Bundespatentgericht which stated that the representation had features which distinguished it from the usual layout of retail stores but it referred the following questions to the Court of Justice:
- Is Article 2 of the Trade Marks Directive 2008/85 (the Directive) 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) of the Directive 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 of the Directive to be interpreted as meaning that the requirement for graphic representability is satisfied by a representation by a design alone or with such additions as a description of the layout or indications of the absolute dimensions in metres or relative dimensions with indications as to proportions?
- Is Article 4 of the Directive to be interpreted as meaning that the scale of the protection afforded by a trade mark for retail services also extends to the goods produced by the retailer itself?
In its decision (Apple Inc. v Deutsches Patent - und Markenamt Case C-421/13), the Court of Justice pointed out that a design is capable of meeting the fundamental requirements of a sign capable of graphic representation. Accordingly a representation depicting the layout of a retail store by means of lines, curves and shapes (essentially a design) without any indication as to the size or proportions of the layout of the store may constitute a trade mark if it is also capable of distinguishing the goods or services of one undertaking from another.
The Court of Justice concluded that the representation of the layout of a retail store was capable of distinguishing the goods or services of one undertaking from another, for example where it "departs significantly from the norm or customs of the economic sector concerned." As with any other mark, it must then go on to be assessed for distinctive character and descriptiveness by the relevant trade mark authority.
The Court of Justice went on to state that as long as a representation of a flagship store meets all of the requirements for a trade mark under the Directive, it may be registered for services where those services do not form "an integral part of the offer for sale of those goods" provided that the sign is capable of distinguishing the services of the applicant from those of other undertakings. In this instance Apple had referred to the holding of seminars or demonstrations in its stores.
The case will now revert to the Bundespatentgericht, which will need to determine whether or not it believes that the Apple store representation meets the criteria for being capable of distinguishing goods or services from other undertakings. Apple will also need to demonstrate that the format of the store, as depicted in the mark, is inherently distinctive or that it has acquired distinctiveness by becoming associated with Apple alone in the minds of consumers.
Will this decision see a flood of applications for store design layouts? While the decision means that, in principle, retailers can seek protection for their store formats, they will still need to overcome the distinctiveness requirement. For many, proving that their store layout is exclusively associated with them and no other, will prove challenging. We do not expect a raft of registrations quite yet.