Upsetting the Applecart? An Apple a Delay Keeps the Trade Mark Away

Apple retailing
in bygone days ...
The IPKat has been known to complain from time to time about the over-intellectualisation of European Union trade mark law. His pleas that trade marks are actually quite easy to understand and that the Court of Justice of the European Union, aided and abetted by national courts, has constructed an edifice worthy of the Glass Bead Game but unrecognisable in terms of what ordinary traders and customers think trade marks are, have fallen on deaf ears.  As proof that a Kat can recognise reality when he sees it, this blogger concedes that European Union trade mark law is never going to return to any semblance of commercial common sense for as long as it is dragged along the path to jurisprudential fantasy as a passenger of a cart pulled by a Court and a Legislator, yoked together by a shared ignorance of intellectual property and suspicion of monopoly.  Accordingly, this Kat has decided to engage a little more closely with the development of this body of rules, starting with Case C-421/13 APPLE. Accordingly, to save everyone time and effort, he is going to give not only the questions referred in this matter but also the answers.

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]

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].
If you would like to comment on this case and thereby influence the UK government to intervene, just email by 16 September 2013.

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
Upsetting the Applecart? An Apple a Delay Keeps the Trade Mark Away Upsetting the Applecart? An Apple a Delay Keeps the Trade Mark Away Reviewed by Jeremy on Thursday, September 12, 2013 Rating: 5


  1. An Apple store is just like a bottle (which is capable of registration); you look in through the glass at the enticing contents and think - I want some of that!

  2. The referring court is not the Bundesgerichtshof but the Bundespatentgericht.

  3. Dear All

    First, yes it's the Bundespatentgericht.

    Second, the questions and their translations arenot yet available from the curia website.

    Third, Q4 actually asks not for the "scale" but the "scope" of protection ("Schutzumfang"). When reading the reasons (in German) for the reference, it becomes clear that the question is whether registration may be obtained for the applicant's own goods sold at retails, or only for third-party goods. The question is purely theoretical, because the list of goods and services is - as would be expected - not limited to the applicant's own goods sold at retail. Readers reading German are referred to the publication of the references in the APPLE case (and the companion NETTO case)in the September issue of GRUR, and the "Anmerkung" produced by me.

    Alexander v. Mühlendahl


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