A Retail Store Layout May be Registered as a Trade Mark

July 2014

The CJEU has confirmed (Judgment in Case C-421/13, Apple Inc. v Deutsches Patent- und Markenamt) that the representation of the layout of a retail store, such as an ‘Apple’ flagship store may, subject to certain conditions, be registered as a trade mark; provided the representation is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In 2010 Apple registered a three-dimensional trade mark (shown below) consisting of the representation, by a multicoloured design, of its flagship stores, at the USPTO.  That trade mark was registered for “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”.

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When Apple sought to extend the mark internationally, the German PTO refused the mark on the ground that “the depiction of the space devoted to the sale of the undertaking’s goods was nothing other than the representation of an essential aspect of that undertaking’s business and that consumers would not see it as an indication of the commercial origin of the goods.”   Apple appealed the German PTO’s refusal of the mark and a case was brought before the German Federal Patents Court.

Although the German Court acknowledged that the layout depicted by the three-dimensional Apple store trade mark had features that distinguished it from the usual layout of retail stores in the electronic sector, it nonetheless referred a series of question to the CJEU.  The questions concerned, the interpretation of Articles 2 and 3 of EU “trade mark” Directive 2008/95/EC and sought clarity on whether the representation of the layout of a retail store, by a design alone, without any indication of size or proportions, may be registered as a trade mark for services aimed at inducing the consumer to purchase the goods of the applicant for registration and, if so, whether such a ‘presentation of the establishment in which a service is provided’ may be treated in the same way as ‘packaging.’ 

The CJEU judgement notes first of all that, in order to be capable of constituting a trade mark, the subject-matter of the application for registration must, in accordance with the trade marks directive, satisfy three conditions, namely, that it must (1) constitute a sign, (2) be capable of graphic representation and (3) be capable of distinguishing the ‘goods’ or ‘services’ of one undertaking from those of other undertakings.

A sign - The CJEU confirmed that designs are among the categories of signs capable of graphic representation.  So, it could not be ruled out that the layout of a retail outlet depicted by such a sign may allow the products or the services for which registration is sought to be identified as originating from a particular undertaking. 

Capable of Graphic Representation - The CJEU confirmed it is absolutely plain from the wording of Article 2 of Directive 2008/95 that designs are among the categories of signs capable of graphic representation.  Therefore, 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. 

Be capable of distinguishing the ‘goods’ or ‘services’ from those of other undertakings - Furthermore, 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.  In that regard, the CJEU observed that it cannot be ruled out that the layout of a retail outlet depicted by such a sign may allow the products or the services for which registration is sought to be identified as originating from a particular undertaking, provided that the sign has a distinctive character when assessed reference to, (a) the goods or services in question and, (b) the perception of the relevant public, namely the average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect.

So in conclusion, a design representing the layout of a retail store, should be assessed by a trade mark office in the same way as any other type of sign.  The matter must now go back to the German Court to ultimately decide, but the CJEU has been quite clear that the representation of the layout of a retail store, by a design alone, is capable of distinguishing the services of an applicant for registration from those of other undertakings and that no ground for refusal prevent registration as a trade mark per se.

This update was prepared by Lee Curtis,  Partner of our Manchester office.  Tel: +44(0) 161 247 4900.

If you would like further advice on this or any other matter, please contact Lee Curtis at lcurtis@hgf.com  or your usual HGF representative or visit our Contact Page to get in touch with your nearest HGF office.