Beyond feng shui? Apple pushes the boundaries of trade marks

Can a store layout really be registered as a trade mark? Theo Savvides, a partner at Osborne Clarke, examines the significance of a ruling by the Court of Justice of the European Union (CJEU) that Apple could register its store layout as a trade mark, provided certain conditions were met.

 Apple Inc v Deutsches Patent-und Markenamt: C-421/13 [2014] All ER (D) 137 (Jul)

What are the issues concerning the type of registration sought by Apple?

Apple was seeking to register its flagship store layout as a trade mark in Germany. Its application was for a three-dimensional trade mark consisting of the representation, by a colour design of the store layout, to be registered for retail services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto. It sought to represent the store layout by reference to a general description ('the distinctive design and layout of a retail store') and a graphic representation of the store layout.

The German trade mark office refused the application on the grounds that the store layout design was nothing more than the representation of an essential aspect of Apple's business and was not sufficiently distinguishable from the stores of other providers of electronic products. The appellate court found that the store layout design Apple sought to register had features that distinguished it from the usual layout of retail stores in the electronics sector. However, it took the view that the application raised more fundamental issues of trade mark law as to:

o           the registrability of store layouts in general under arts 2 and 3(1)

o           whether the art 2 requirement that the sign should be capable of being represented graphically was satisfied by a representation of the store layout by reference to a design alone or with additions such as a description of the layout, indications of the exact dimensions of the layout in metres or relative dimensions of the layout, with indications of the relative proportions of the layout dimensions.

Accordingly, it asked the CJEU for a preliminary ruling.

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What was the CJEU's approach to this matter?

It considered the three conditions that must be satisfied in order for the subject matter of any trade mark application to be capable of registration--namely that it must be a sign, the sign must be capable of graphic representation, and the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In considering these conditions it found that:

o           it was plain from the wording of art 2 that designs are among the categories of signs capable of graphic representation

o           furthermore, a representation of a retail store layout by means of a design consisting of an integral collection of lines, curves and shapes could constitute a trade mark without it being necessary to give any indication as to the size or proportions of the store layout depicted, and

o           such a retail store layout design is capable of distinguishing the products or services of one undertaking from those of other undertakings

Is the media right to represent this as a victory for Apple?

Apple's application to extend its international registration to Germany will now be remitted to the referring court to give a final ruling on the application under the appeal. However, it is with good reason that the media has represented the CJEU's judgment as a victory for Apple--the final hurdle that Apple will need to overcome is to persuade the German court that its retail store layout design is capable of distinguishing its products or services from those of other undertakings. However, the finding of the German court, prior to its reference to the CJEU, that the store layout design that Apple was seeking to register had features that distinguished it from the usual layout of retail stores in the electronics sector would appear to have answered this question already. This would suggest that the registration of the Apple trade mark should be a formality from here.

What are the likely consequences of this decision?

It would be tempting to say that this decision will open the floodgates to retailers applying to register their store layouts. However, the key to this decision is the requirement that the store layout design should be capable of distinguishing the products or services of one undertaking from those of other undertakings. In the case of Apple, its store layout would appear to be unusual in the electronics retail sector, if not in retail generally. It is likely that a critical eye will be taken to trade mark applications for store layouts to assess whether they are capable of distinguishing the products or services of the applicant from those of other retailers for similar goods or services. On the reverse side of this, trade mark protection for a store layout is most likely going to appeal to retailers who feel that their store layout is something that distinguishes them from their competition and is going to attract consumers to their shops in preference to the competition and is, therefore, worth protecting.

What should lawyers take from the CJEU's ruling?

While legal practitioners should be raising the possibility of protecting store layouts with their clients, they should be taking a critical eye to any store layout they are asked to seek protection for to ensure that it is sufficiently distinctive. In particular they should be assessing whether the store layout design is made up of features such as colour, fixtures, fittings, furniture and spatial layout which, either in combination or alone, are sufficiently different and distinct from those of other retailers.

Interviewed by Robert Matthews and republished with permission of WIPIT’s sister site, Lexis®PSL IP&IT.

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