The European Court of Justice (ECJ) has held that it may be possible to register the design of the layout of a retail store as a trade mark for goods and services.
A trade mark can consist of any signs capable of being represented graphically, but they must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (Article 2, Trade Marks Directive (2008/95/EC)) (2008 Directive). Some signs are unacceptable for registration as a trade mark; for example, if they lack distinctive character.
A obtained a US trade mark registration of a three-dimensional trade mark consisting of the representation, by a colour design of the layout of its flagship stores for “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”. It covered services aimed at inducing the consumer to buy A’s products; for example, product demonstration services which did not form part of what the customer was actually buying.
A applied for an international trade mark registration under the Madrid Agreement using its US registration as the home registration. The German trade mark registry rejected the extension of the international trade mark to German territory on the ground that the sign consisted of an essential aspect of A’s business, consumers would not see the sign as indicative of commercial origin, and because the retail store that was depicted was not sufficiently distinguishable from other traders’ electronics stores. A appealed.
The Federal Patent Court of Germany referred questions about trade mark registration to the ECJ.
The ECJ held that, under the 2008 Directive, the design of the layout of a retail store may be registered as a trade mark for services that relate to goods but do not form an integral part of the offer for the sale of those goods. However, the sign must be capable of distinguishing the applicant’s services from those of other undertakings. In addition, registration cannot be precluded by any of the grounds for refusal set out in the 2008 Directive.
If the depicted layout departed significantly from the customs or norms of the sector concerned, it could not be ruled out that a design of a store layout might be capable of distinguishing the products or services of a particular undertaking. So, A’s sign could in theory function as a trade mark. The national court should then consider whether the sign might lack distinctive character in the eyes of the relevant public in relation to the goods or services concerned, or be descriptive of them.
Services intended to induce the consumer to buy the trade mark applicant’s products could constitute “services” under the 2008 Directive. So, a sign depicting the layout of the flagship stores of a goods manufacturer can legitimately be registered not only for the goods themselves, but also for services, even if they did not form an integral part of the offer to sell those goods. Specifically, services such as “demonstrations by means of seminars of the products that are displayed” could constitute remunerated services falling within the concept of “services” under the 2008 Directive.
This decision shows that retailers which use a sufficiently distinctive layout as an integral part of their branding may be able to register their store layout as a trade mark. Whether this layout departs significantly from the customs or norms of the relevant retail sector will be for the national court to consider. However, the ECJ noted that A’s layout had features that distinguished it from the usual layout of retail stores in that electronic sector. Interestingly, it was not relevant that the design contained no indication as to the size or proportions of the retail store depicted.
Case: Apple Inc v Deutsches Patent- und Markenamt C-421/13.
First published in the September 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.