The CJEU has ruled that a sign depicting the layout of Apple's flagship stores is capable of registration as a three dimensional trade mark for goods and services under the Trade Marks Directive (2008/95/EC).
Apple obtained a trade mark registration from the United States Patent and Trademark Office of a 3D mark consisting of the representation of its flagship stores for services in Class 35, namely "retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto". The representation, described by Apple as "the distinctive design and layout of a retail store", is shown below:
Apple subsequently sought to extend the US trade mark internationally under the Madrid Agreement. That extension was accepted in some jurisdictions but refused in others, including in Germany where it was refused by the German Patent and Trade Mark Office (the "DPMA"). The DPMA refused the extension of the international trade mark (IR 1060321) to German territory on the ground that the depiction of the space devoted to the sale of Apple's products was nothing other than the representation of an essential aspect of Apple's business. The DPMA considered that while consumers might perceive the layout of such a retail space as an indication of the quality and price bracket of the products sold, they would not see it as an indication of their commercial origin. It also considered that the layout of the retail store which was the subject of the mark was not sufficiently distinguishable from the stores of other providers of electronic products.
Apple appealed to the Bundespatentgericht (the Federal Patent Court of Germany) which considered that the store layout depicted by the mark in issue had features which distinguished it from the stores of other providers of electronic products. Nevertheless, it stayed the proceedings and referred the questions below to the CJEU.
Questions referred to the CJEU
The questions referred to the CJEU by the Bundespatentgericht were as follows:
(1) Is Article 2[i] of the Trade marks 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?
(2) Are Articles 2 and 3(1)[ii] 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?
(3) Is Article 2 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 of relative dimensions with indications as to proportions?
(4) Is Article 2 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?’
Summary of the CJEU's decision
The CJEU has ruled as follows:
- In respect of questions 1-3, Articles 2 and 3(1) must be interpreted as meaning that the representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store, may be registered as a trade mark for services consisting of services relating to goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the trade mark applicant from those of other undertakings and that registration is not precluded by any of the grounds for refusal set out in the Trade Marks Directive.
- The fourth question was ruled inadmissible because the scale of the protection covered by such a trade mark was not relevant to the subject matter of the proceedings, which were exclusively concerned with the registrability of the mark in issue.
The CJEU's ruling is therefore in Apple's favour.
- The CJEU stated that it was "absolutely plain" from the wording of Article 2 that designs were among the categories of signs capable of graphic representation. Therefore, it followed that a representation which depicted the layout of a retail store by means of an integral collection of lines, curves and shapes could constitute a trade mark provided that it was capable of distinguishing the products or services of one undertaking from those of other undertakings. Consequently, such a representation would satisfy the requirements of Article 2 without it being necessary to either (i) attribute any relevance to the fact that the design did not contain any indication as to the size and proportions of the retail store that it depicts, or (ii) examine whether such a design could equally, as a 'presentation of the establishment in which a service is provided', be treated in the same way as 'packaging' within the meaning of Article 2.
- On the issue of distinctiveness, the CJEU said that the representation, by a design, of a retail store was also capable of distinguishing the products or services of one undertaking from those of other undertakings (i.e. was capable of satisfying the third condition contained in Article 2). The CJEU refused to rule out that the layout of a retail outlet depicted by such a sign may allow the products or services for which registration is sought to be identified as originating from a particular undertaking, such as when the depicted layout departs significantly from the norm or customs of the economic sector concerned. However, the distinctive character of the sign must still be assessed for the purposes of Article 3(1)(b), and the sign must also satisfy the other criteria for registration contained in Article 3(1).
- Provided the conditions set out in Article 2 and 3(1) were satisfied, the CJEU found that a sign depicting the layout of flagship stores of a goods manufacturer could be registered not only in respect of the goods themselves but also for services, even where those services do not form an integral part of the offer for sale of those goods. Certain services, such as those referred to in Apple's application and during the proceedings, including the carrying out of in-store demonstrations of the products on display there, could constitute remunerated services falling within the concept of 'service'.
The CJEU's ruling will be welcomed by retailers which operate commercial establishments with distinctive layouts which are not solely functional, and is likely to be of particular significance for those in the consumer goods and food and beverage sectors, particularly those operating through a franchise model.
The possibility of trade mark protection for distinctive layouts of commercial establishments offers an additional level of protection where retailers might previously have been forced to rely on the law of passing off to take action against copycat establishments, or on trade mark registrations for just certain aspects of the appearance of a commercial establishment, such as a particular colour when applied to specific surfaces.
It is, however, likely that objections to such applications will be raised by many registries on the grounds that the 'sign' is not inherently distinctive unless the depicted layout departs significantly from the norm or customs of the sector. In many cases, therefore, it will necessary to rely upon acquired distinctiveness to secure registration of such marks.
The judgment of the CJEU of 10 July 2014 can be viewed here
[i] Article 2 of the Trade Marks Directive provides as follows: ‘A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’
[ii] Article 3(1) of the Trade Marks Directive provides as follows: ‘The following shall not be registered or, if registered, shall be liable to be declared invalid:
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;