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.