|Apple retailing |
in bygone days ...
So what is Case C-421/13? This reference concerns a request for a preliminary ruling regarding an application for the domestic extension of protection for a 3D trade mark which was registered internationally for services in Class 35 (retail store services), described as 'distinctive design and layout of a retail store'. The application was refused on the grounds that the applied-for sign was devoid of distinctive character, and the referring court -- none other than the highly-regarded and intellectually talented Bundespatentgericht, Germany, has asked the following questions:
1.Is article 2 of the Directive [2008/95 to approximate the laws of the Member States relating to trade marks] to be interpreted as meaning that the possibility of protection for the 'packaging of goods' also extends to the layout in which a service is incorporated? [Says the IPKat, in the world of European trade mark almost anything is possible, so long as the facts are right and that is something which, we all know, is for the national/regional office/court to determine. It's fun to think of circumstances in which 'packaging of goods' extends to a 'layout in which a service is incorporated', and the best suggestions from readers will be suitably rewarded with a generous Katpat]If you would like to comment on this case and thereby influence the UK government to intervene, just email email@example.com by 16 September 2013.
2.Are Articles 2 and 3(1) of the Directive to be interpreted as meaning that a sign representing the layout in which the service is incorporated is capable of being registered as a trade mark? [Says this Kat: the answer is "yes", so long as it's not caught by any of the absolute bars to registration, enjoys the benefit of at least a smidgeon of distinctive character and is likely to be regarded by the relevant consumer as a trade mark and not as a pretty picture. Next question, please!]
3.Is Article 2 of the Directive to be interpreted as meaning that the requirement of graphic representability is satisfied by a drawn representation alone [Says the Kat: yes ...] or with such additions as a description of the layout or indications of absolute dimensions in metres or of relative dimensions with indications as to proportions? [... and yes. It all depends on what the trade mark is, and on the context in which it is intended to be deployed]
4.Is Article 2 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? [This Kat says: this is surely a mistake. Article 2 does not deal with the scale of protection, but only with what is capable of being protected. However, the numeral '2' is only really a sort of upside-down '5', and it's Article 5 that deals with the scale of protection. Merpel, who is far wiser than the IPKat, disagrees. Article 5 deals with the scope of protection, i.e. what is covered by the registration. The scale of protection is omitted from the Directive but provided for in the IP Enforcement Directive, 2004/48, which says how much protection will be given in respect of anything that falls within the scope of protection conferred by the relevant infringed IP right].
New readers may not be familiar with the reference procedure. What happens is that the German proceedings are now in a state of suspended until the questions listed above are considered by the CJEU and then returned to the referring court. If the CJEU says things like "it's a matter for the national courts to decide" and then mention anything that the national courts haven't yet decided, any case that has been referred by an appellate court may have to be remitted to a lower court to make the necessary findings of fact, following which it may or may not be necessary to make a further appeal. All of this means delay, and sometimes delay after delay, before Apple gets, or doesn't get, its registration -- which in turn means that this trade mark application and its repercussions may be with us for a long while to come.
Apples sold retail here (an absolute must)
Upsetting the applecart here
An apple a day keeps the doctor away here