I am often asked what can be registered as a trademark. It could be names and logos, but also colours, shapes and even shop layouts. Yes, even the layout of a shop may be specific enough to be successfully registered as a trademark.
This was the subject of a decision handed down this year by the Courts of Justice of the European Union (CJEU) in a case referred to it by the German Federal Patent Court. The German court was faced with an appeal from the decision of the German patent and trademark office which had disallowed Apple’s US trademark for the design of the Apple Store to be registered in Germany.
Apple had previously successfully registered a 3D trademark in the US for the layout of the Apple Store by submitting a design representation of their flagship store. The US mark was registered in relation to “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”. The German patent and trademark office opposed the registration of the mark in Germany arguing that consumers would not consider the layout of the shop as fulfilling the function of indicating the origin of the goods.
Apple had previously successfully registered a 3D trademark in the US
Essentially, it has now been well accepted that the primary function of a trademark is that of identifying the origin of goods. Therefore all marks are examined, among other points, with regard to whether they convey to the average consumer the correct information as to the identity of the producer of the goods. The depiction must help consumers know the trade origin of the goods.
The German court therefore asked the CJEU whether the trademarks directive would allow the presentation of the establishment to be admissible as a trade mark application.
The CJEU held that a representation that depicts the layout of a retail store by means of a collection of lines, curves and shapes – therefore a graphic representation – may constitute a trademark provided that this is capable of distinguishing the goods or services of that undertaking from those of another.
It then becomes the decision of each country’s trademarks office to assess whether the retail format is distinctive enough to be accepted on to the trademark register. This would follow an examination process similar to any other trademark application. Is the layout distinctive enough? Is the layout descriptive of the goods/services to which it applies (in this case, retail)?
Further comment has centred on the perception of the relevant public – would the relevant public consider it sufficiently distinctive? Does the public, in this case, consider the layout of the Apple Store distinctive enough to be a trademark? Is it enough to identify Apple solely on the basis of the shop design? This would effectively mean that Apple would have a monopoly on this shop layout.
In essence the CJEU returned its judgment by applying the basic requirements for the granting of a trademark to this scenario. It boils down to the graphic representation of the mark and whether such representation fulfils the legislative requirements, and is distinctive enough to warrant registration.
In practice this means that should the trademark offices deem it to be distinctive, Apple may have successfully managed to grow their brand portfolio further. That and they have given us all a new trademark to consider – shop layouts.
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This article is not intended to offer professional advice and you should not act upon the matters referred to in it without seeking specific advice.
Jeanine Rizzo specialises in intellectual property law and art law at Fenech & Fenech Advocates.