RETAILERS, HOTELIERS AND franchisors will
welcome a recent decision of the Court of Justice of the European
Union (ECJ) which confirmed that it is possible to register the
design of the fit-out of a retail store as a trade mark, provided
that it can function as a trade mark.
In most jurisdictions, including Australia, in order for a mark
to be registered as a trade mark it must:
be a sign capable of being graphically represented
distinguish the goods and services provided under the trade
mark from the goods and services offered by other traders
act as a badge of origin for the goods and services provided by
reference to the trade mark.
In November 2010, Apple Inc (Apple) registered a
three-dimensional trade mark in the United States. The trade mark
consisted of the representation of the distinctive design and
layout of its flagship retail store. The trade mark is registered
for retail services of various electronic goods and product
demonstrations in class 35.
Apple sought to extend the protection of its trade mark
internationally, however, the German Patent and Trade Mark Office
refused to accept the trade mark for registration on the basis
although consumers of Apple products may feel that the layout
of the store indicates the quality of the product, they would not
see it as indicative of the origin of the product
the layout was not sufficiently distinctive to distinguish it
from the stores of other traders of electronic products.
Apple appealed the decision to the Federal Patent Court of
Germany (FPC). The FPC then referred certain questions to the ECJ
to provide guidance on whether a store fit-out can be protected as
a trade mark. The ECJ held that:
a design for the fit-out of a retail store can be registered as
a trade mark without specifying the size or proportions of the
store, provided that the design is capable of distinguishing the
services of the applicant from other traders and the mark meets the
requirements for registration
a design of a retail store is capable of distinguishing the
products or services of one trader from another where the design
and fit-out is significantly different from what is considered to
be normal or customary in the particular industry
provided that the above conditions are satisfied, a design for
a fit-out of a flagship store of goods can be registered in
relation to the goods and also for services which do not form part
of the sale of goods. In Apple's case this includes the
in-store demonstration of products sold in the store.
The case has now been referred back to the FPC for final
Apple applied for two trade marks for its store fit-out in
Australia in 2010, however, it allowed those applications to
In order to register a store fit-out as a trade mark in
Australia, a trade mark owner needs to satisfy the Examiner that
the store fit-out:
acts as a trade mark ie can consumers look at the layout only,
without the brand name or associated logos of the applicant
displayed prominently on the storefront andn within the store
itself, and associate it with the applicant
is distinctive from the store fit-outs of other traders.
Evidence of substantial use is likely to be required in order to
register a trade mark for a store fit-out in Australia. Therefore,
retailers which have unique, distinctive and consistent store
fit-out and have been using this for a lengthy and continuous
period, and with extensive public advertising of the store
featuring the fit-out, should consider filing a trade mark
application to seek to prevent others from copying the fit-out.
Based on the above European decision, it will be interesting to
see if Apple tries again to register its store fit-out in
Australia. As at November 2014, Apple had not sought to re-file
trade mark applications in Australia for its store fit-out. This
decision follows the recent trend of brand owners seeking
registered trade marks for less traditional aspects of their
branding, such as shapes (chocolate confectionery shops), colours
(including on the exterior of stores eg 7 Eleven, BP, Donut King),
scents (the scent of eucalyptus in relation to golf tees) and
sounds (BOOST jingle).
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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