For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 10 July 2014

CJEU: Retail store design may be registrable as a trade mark (Apple Inc. v DPMA)

The CJEU today (in case in C-421/13, Apple Inc. v Deutsches Patent- und Markenamt, see here) confirmed that the representation of the layout of a retail store, such as the one depicted below, may - subject to certain conditions - be registered as a trade mark. 

The iAltar - a trade mark?

What had happened?  In a dispute between Apple and the DPMA (the German Patent and Trademark Office) relating to the registrability of Apple’s device trade mark depicting its flagship store design, the German Federal Patent Court had referred the below questions to the CJEU for a preliminary ruling.
"(1) Is Article 2 of Directive [2008/95] 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) of Directive [2008/95] 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 of Directive [2008/95] 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 of Directive [2008/95] 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?"
Apple had previously, in 2010, successfully registered a 3D trade mark at the USPTO, consisting of the (see above to the right) multicoloured design representation of its flagship store. The US 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".  When Apple tried to extend its protection internationally, the DPMA refused and said, in essence, that consumers would not regard the sign as a trade mark in sense of indicating trade origin: 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.  On appeal, the Federal Patent Court, which did not appear to agree with the DPMA, decided to refer the matter to the CJEU.
 
The CJEU today answered the German Federal Patent Court's question succintly as follows:
"Articles 2 and 3 of Directive 2008/95 of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks 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 in services relating to those 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 applicant for registration from those of other undertakings; and, that registration is not precluded by any of the grounds for refusal set out in that directive." [emphasis by the IPKat]

Notably, the CJEU held that a representation that 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 the representation is capable of distinguishing the goods or services of one undertaking from those of other undertakings. In this context it was relevant whether the depicted layout departed significantly from the norm or customs of the economic sector concerned (at para 20).

Whether a design representing the layout of a retail store was distinctive enough to be registrable had to be assessed by reference to the goods or services in question and with regard to the perception of the relevant public.

The assessment criteria, the respective competent authority must apply, should not differ from those used for other types of signs.  Further, it was necessary on a case-by-case assessment to ascertain whether the sign may be descriptive or should be refused on any other grounds.  

As regards to the inclusion of services, the court found that a sign representing the layout of the flagship stores of a manufacturer of goods may lawfully be registered also for services so long as they 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 clarified by Apple during the hearing, which consist of carrying out, in such stores, demonstrations by means of seminars of the products that are displayed there, can themselves constitute remunerated services falling within the concept of ‘service." (at para 26)


This decision (only 30 paragraphs long) does at first glance appear to be rather groundbreaking and will - no doubt - be the subject of many learned articles to come. - and receive much media coverage  What its actual ramifications will be for EU trade mark practice, can, however, only be guessed at this time.

 


20 comments:

Anonymous said...

Surely it is the use of the mark which is where the problem will lie. The design as shown could be used on flyers etc. rather than only the design of the store.

Anonymous said...

Isn't the CJEU just saying that such a trade mark application does not fail ab initio, as a generic rule. But the test of whether there is a valid trade mark lies in a specific application and the distinctiveness that such a design brings?

Anonymous said...

The CJEU is merely saying that in principle such a design is capable of qualifying as a registrable trade mark provided the usual criteria are met, as for other types of trade marks. Nothing "groundbreaking" about it.

Birgit Clark said...

@Anonymous - the last one: that is why I said "at first glance". If it was THAT clear cut though, the German Federal Patent Court, would not have referred it to the CJEU. My humble German opinion only....

Anonymous said...

So you think it is groundbreaking then, because the German Federal Patent Court referred questions to the CJEU ? I confess I do not see the logic in that. You go on to say "what its actual ramifications will be can only be guessed". For myself, I suspect the German Court will think of setting out requirements on how such a mark should be made specific so that its extent is clear to third parties e the usual requirements for all types of marks, no ??

Birgit Clark said...

We shall see! :-) See how you are clearly excited enough about the case to comment and look how much press coverage there is about it. If not groundbreaking, it is certainly "newsworthy".

Anonymous said...

This decision will seem more ground-breaking once granting offices and courts have to unravel the mysteries of what constitutes a similar mark for the purposes of infringement and opposition.

Anonymous said...

Birgit, I beg to differ - I am so NOT excited about the case, I have not seen any press coverage about it other than IPKat and I consider it "interesting" at a stretch, but that is only because I am surprised at the referral to the CJEU, hence my comment on your post.. I shall end it at that in the hope that we both can now move on.

Anonymous said...

Perhaps anon 12:10 doesn't read the news. Just about everyone has covered it.

http://www.telegraph.co.uk/finance/newsbysector/mediatechnologyandtelecoms/digital-media/10960516/Apple-wins-permission-to-trademark-stores.html

http://www.dailymail.co.uk/wires/ap/article-2687217/Apple-wins-EU-court-case-store-design-trademark.html

http://www.theregister.co.uk/2014/07/10/apple_ec_court_store_design/

Anonymous said...

Thank you Anonymous at 12.28 - I stand corrected on news reports - it is "newsworthy" but then I guess that is not surprising given the applicant is Apple. From a legal perspective though, I am still of the opinion that it did not need a referral to the CJEU.

Anonymous said...

A story in a newspaper doesn't mean it's newsworthy, it just means that a journalist, who knows nothing about IP, sees the name "Apple", and knows that will gain a few clicks.

The outcome is that many readers of such stories will have further disdain for IP protection in particular, and the law in general, because they will believe that Apple has in fact been granted such a trade mark, rather than the CJEU merely finding that such a trade mark may be valid.

Birgit Clark said...

Well, the original Anonymous clearly is secretly rather excited by the case after all :) I have looked a bit and it has received extensive coverage in the media. I assume most journalists and readers are as easily excitable as I am. I quite like the case and have no wish to move on at all. Thanks for all the enthusiam and special thanks to Anonymous who is such a good sport. I really appreciate your comments: it is great we have such discerning readers. Best wishes, B

Anonymous said...

Here's the problem in believing that the mainstream media can deliver an IP message:

The Telegraph: The ruling clears the way for Apple to be granted a trademark in Germany for its stores, as well as in the UK, where the company has also applied.

For real!?

The Daily Mail: The Court of Justice on Thursday overturned a decision by German patent authorities which last year rejected an application to grant copyright protection to Apple's store design

Copyright!?

The Register: This is on the condition that Apple's trademark blueprint "is capable of distinguishing" between its goods and those from other retailers.

Well, at the least the Reg gets the point.

Don't get me wrong, I think it is an interesting decision. But the really interesting thing will be in the application and protection of any resulting trade mark, if anyone is ever able to successfully register such a mark.

Anonymous said...

I doubt that the original or any other Anonymous was trying to be a good sport or holds secret views contrary to those he or she expressed. What a bizarre interpretation ! We are all (including you) entitled to express our views without being ascribed other views. Like the case all you want but please appreciate the comments of your discerning readers at face value.

Anonymous said...

Anonymous @ 23:53,

My reaction to your post is mixed.

While I agree (fully) that an expressed view should be taken for the expressed meaning and that other inconsistent views should not be ascribed (as this too easily leads to manipulation through mischaracterization), "face value" is a somewhat odd and nuanced term, especially dealing with some posters (anonymous or otherwise) that show a pattern of, well, shall we say dissembling (like it or not, there is plenty of active dissembling on patent blogs).

I would contrast "taking at face value" with "taking a critical view." I may be over-reading the intent of your comment, but it strikes me as very much like the warrior/citizens of Troy taking that great big wooden gift "at face value" and wheeling the gift within the city walls. Thanks, but I would like to think I learned a little from that history lesson.

Anonymous said...

Anon @12.39

Since I do not frequent patent blogs, I cannot comment on dissembling there although I see how that might be the case on technical issues. This however is a simple case of blogger saying that Anonymous means yes when he / she says no, several times I see, and to characterise someone as a good sport seems to me to belittle that person's comments. I agree with you that "taking a critical view" is better than "taking at face value" in certain instances such as technical patent issues perhaps but I meant no more than taking no to mean no.

Anonymous said...

And this time Blogger writes with the benefit of IPKat readers' comments, although there is no mention of what conditions eg specificity the German Court might set down for registration to be granted - http://www.thegrocer.co.uk/stores/apple-paves-way-for-retailers-to-trade-mark-store-layouts/369304.article

Anonymous said...

a new anonymous: There are two interesting points in the judgment.

1. The Court of Justice only clarified that the Article 2 TMD allows registration of a shop design and that in order to fulfill the criteria of graphic representation, a further indication of size and proportions is not necessary.

It did not decide whether the sign is distinctive etc. I would be surprised to see that a shop that is composed of tables and with windows on the left and the right might be considered distinctive.

2. I am more preoccupied by the unclear wording of the retail services. Who is the client of retail services? Who pays the retail services? I thought that it was the final consumer, who paid the retail services in the sales price. He goes to the Praktiker store, because he wishes to a) select from the choice of products and b) receive the advice of the sales peson and c) receives training how to use it and he pais a global price for everything when paying the products. Now, par 26 seems to say that the service must be something separate and must have its own price, such as a training course for the computer. This does not seem to be compatible with the unterstanding of the retail services by Praktiker.

Anonymous said...

Anonymous @11.42
Thanks for sharing blogger's article in The Grocer. It makes for interesting reading. I particularly like the changes of blogger's views on "groundbreaking" and ramifications. I suggest that blogger reference her IPKat post and these comments in the comments section of her Grocer article. Go on B, be a sport.
Anonymous @16.58
I agree with your point 2, it's not clear and I have not seen any explanations or commentary on this going beyond what was said by the CJEU.

Anonymous said...

There's a school of thought that says taking material from multiple sources means that those sources are less likely to be identified in your own writing. I did a search for articles on Google and noted the one linked below by the esteemed Lee Curtis which, like the blogger's article in The Grocer, starts with Apple "winning". Both articles are very similar although the points made are not all in the same order - another way of avoiding detection. Thing is, Lee is always very quick off the mark and his article was published on 10 July whereas blogger's article was published a day later on 11 July. Have a read, and check other articles on the net which as far as I can see, do not talk in terms of Apple "winning"...
http://www.marketingmagazine.co.uk/article/1302986/apple-wins-eu-battle-register-store-layout-trademark

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