On 10 July 2014, the Court of Justice of the European Union (CJEU) provided its judgment in the dispute between Apple Inc. (Apple) and the German Patent and Trade Mark Office, Deutches Patent und Markenanmt (DPMA) that the representation of the layout of Apple’s flagship store is capable of registration as a 3D trademark for services relating to goods.
On 10 November 2010, Apple registered the below representation of its flagship store layout as an international 3D trademark for services relating to goods with the US Patent and Trademark Office:
On 24 January 2013, DPMA refused the extension of the trademark to German territory on the ground that the depiction of the layout of Apple’s flagship store was nothing more than the representation of an essential aspect of its business.
Apple appealed DPMA’s decision to the Federal Patent Court of Germany, who in turn referred to the CJEU questions on whether the representation of the layout of an establishment is capable of being registered as a trademark.
Is the representation of the layout of an establishment capable of being a registered trademark?
The CJEU found that the representation of a layout of a retail store, by design alone, without indicating the size or the proportions, may be registered as a trademark for services relating to goods. However, the representation must be capable of distinguishing the services of the trademark applicant from those of other businesses and not fall foul of any other grounds for refusal.
Impact on businesses
The CJEU's ruling will be welcomed by retailers with distinctive layouts (e.g. franchises in the food sector) as it will provide them with an additional right of recourse against copycat establishments.
Certain businesses may find it difficult to take advantage of this new development if their store designs are distinctive but not easily graphically representable.
Another potential obstacle for businesses looking to trademark their store designs is lack of distinctiveness i.e. failing to show that the store layout significantly departs from the norm or customs of a sector. In such cases the trademark applicant will need to show that, prior to the date of application, the services relating to goods have acquired distinctiveness through use.
Author: Howard DuckworthThis information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.