The Court of Justice of the European Union (the
CJEU) has found that the design and layout of Apple's
retail store is capable of being registered as a three dimensional
Whether the layout will actually be registered now turns
on whether Apple can prove it is distinctive enough to distinguish
Apple's goods and services from those of its
In the UK, distinctive décor has been protected
under passing off. But actual registration as a trade mark is a new
The "trade mark"
The United States Patent and Trademark Office registered the
mark - represented in a mainly light brown and metallic grey
drawing of the layout of Apple's flagship store - in November
Since then, Apple has sought protection for the three
dimensional mark in other countries with varying success. The
German patent and trademark office declined to register it, finding
that the layout of a store is inherently incapable of being
registered as a trade mark, and that in any event, Apple's
layout is not sufficiently distinctive.
Apple appealed to Germany's Federal Patent Court. That Court
chose to refer some of the more fundamental trade mark law
questions to the CJEU.
Registration is being sought in relation to class 35 of the NICE
classification, specifically "retail store services
featuring computers, computer software, computer peripherals,
mobile phones, consumer electronics and related accessories and
demonstrations of products relating thereto."
The CJEU's decision
Only a sign that is capable of being represented graphically and
that is capable of distinguishing the services of one entity from
those of another may be considered for registration as a trade
The CJEU2 said that the design and layout of
Apple's flagship retail store satisfied these requirements. The
Court said that:
floor plans and store layouts are signs capable of graphical
representation - in fact, designs are specifically mentioned in
Article 2 of the Directive 2008/95. The Court observed that
Apple's store layout met the "sign capable of graphic
representation" requirement without including dimensions or
proportions on the plan, or without needing to revert to an analogy
with the "packaging" of goods, and
it couldn't rule out the possibility that the layout of a
retail store could be capable of distinguishing Apple's goods
and services from those of its competitors. Specifically, the Court
thought this might happen when the layout in the application was
different to the standard layout used by retail stores in the
The German patent and trademark office also disputed that
Apple's store layout related to "services". It argued
that where the sole objective of the stated services is to induce
the purchase of goods, these should not be considered services for
the purpose of Article 2 of the Directive 2008/95.
But the CJEU sided with Apple. The Court said that as long as
the services do not form an integral part of the offer for sale of
the goods, then the mark could be registered in respect of those
services (as well as the type of goods sold). Apple passed this
test because it had demonstrations, including seminars, about the
products within the store – a service which was not integral
to the offer for sale of Apple products.
Chapman Tripp comment
Whether the German courts let Apple over the next hurdle for
trade mark registration and hold that the design and layout of
their flagship stores actually distinguishes Apple's goods and
services from those of their competitors will be interesting. It
will also be interesting to see what approach the courts in
jurisdictions that have registered the mark (like the United
States) will take to infringement.
What should New Zealand do in relation to applications for three
dimensional trade marks like Apple's?
Businesses will always push the boundaries of trade mark
protection. And the scope of things that can be registered as trade
marks has widened over time. It is now very settled that colours
and shapes are capable of registration as trade marks.
As shown by the CJEU's decision, in principle, a floor plan
could be registrable. But in our opinion, it remains uncertain
whether having trade marks over floor plans and store layouts would
actually have benefits for businesses or consumers.
1 Article 2, Directive 2008/95
2Case C-421/13, Apple Inc v Deutsches Patent
und Markenamt, 10 July 2014 (CJEU)
The information in this article is for informative purposes
only and should not be relied on as legal advice. Please contact
Chapman Tripp for advice tailored to your situation.
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