The representation of the layout of a retail store may be registered as a trademark, the Court of Justice of the European Union recently confirmed. In order to qualify as such, such a representation must however be capable of distinguishing the goods or services of one undertaking from those of others.
EU trademark law lays down a number of conditions which must be fulfilled for a representation to be capable of constituting a trademark. It must, namely, be a sign which is capable of graphic representation and capable of distinguishing the ‘goods’ or ‘services’ of an undertaking from those of others.
The facts of this case which came before the CJEU were briefly as follows. Apple registered with the United States Patent and Trademark Office a three-dimensional trademark consisting of the representation by a multicoloured design of its flagship stores. It registered the mark for retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto.
Apple subsequently sought to extend the protection of the trademark internationally.
Its extension to German territory was, however, refused by the German Patent and Trademark Office on the basis that 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 its business.
Consumers would not see it as an indication of the origin of the goods, the German trademark office claimed.
Apple appealed against the German office’s decision and the German court seized of the case filed a preliminary reference with the CJEU. It requested guidance from the latter Court as to whether the representation of the layout of a retail store, by a design alone, without any indication of size or proportions, may be registered as a trademark for services aimed at inducing the consumer to purchase the goods of the applicant seeking registration.
The CJEU alluded to the legal requisites which must be fulfilled by any representation which an undertaking is seeking to register as a trademark. It observed that a representation, such as the one in the present case, which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trademark. This is the case only if it is capable of distinguishing the goods or services of one undertaking from those of others. The Court remarked that national authorities cannot immediately rule out that the layout of a retail outlet, depicted by a sign, serves such a purpose. This would be the case where the depicted layout departs significantly from the norm or customs of the economic sector concerned.
Apple subsequently sought to extend the protection of the trademark internationally
The Court noted, however, that the fact that a sign is capable of being registered as a trademark does not always mean that it has a distinctive character as required by EU trademark law. The distinctive character of the sign for which registration is being sought must be assessed by reference to, the goods or services in question and the perception of the average consumer who purchases the particular goods in question. Therefore, national authorities must examine each representation on a case-by-case basis in order to determine whether the sign is capable of being registered as a trademark. However, the CJEU emphasised, the competent authority must apply to a design representing the layout of a retail store, the same assessment criteria that it would apply to other types of signs which come up for examination in order to conclude that it deserves protection as a trademark or otherwise.
The CJEU also noted that, if none of the legal grounds for refusing registration subsist, a sign representing the layout of a flagship store of a particular trader may be registered as a trademark, not only for goods but also for services. Such services must not, however, form an integral part of the offer for sale of the same goods. Services similar to those alluded to in Apple’s application, which consist, for example, in carrying out in-store demonstrations of the products by means of seminars, may qualify as services for which the registration of a trademark is acceptable.
A registered trademark is undoubtedly one of the most precious assets that a trader can possess. The above interpretation of trademark law by the CJEU serves to widen the possibility of registering as a trademark any representation which an undertaking feels is distinctive of the products and services which it offers to consumers.
Mariosa Vella Cardona is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law.