European Union: Apple Able To Register EU Trademark In Store Layout

Apple Inc. v. Deutsches Patent- und Markenamt (Case C-421/13, July 10, 2014)

On July 10, 2014, the Court of Justice of the European Union (ECJ) ruled that Apple Inc.'s design for its flagship store is capable of protection as a three-dimensional trademark, under Articles 2 and 3 of the Community Trade Mark Directive (No. 2008/95/EC) ("Directive"). The case was taken up for preliminary ruling by the ECJ following rejection by the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office or "DPMA") of Apple's request for extension, to Germany, of its international trademark registration of a color representation of its store layout for "retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto" in Class 35. The mark was registered in the U.S. on January 22, 2013, and has also been extended to Israel, Spain and Italy, though it has faced rejections in multiple other jurisdictions in addition to Germany. The mark is reproduced below.

The DPMA based its rejection in Germany on the ground that the store layout is not an indication of origin but rather a representation of an integral part of Apple's business. It also held that the mark is not sufficiently different from the store layout of other electronics retailers to serve as an indication of source for Apple, alone. Following rejection by the DPMA, the case was transferred to the Bundespatent-gericht, Germany's patent court with jurisdiction over industrial property rights, which held that the store layout is indeed distinctive and capable of protection, but which stayed the proceedings to seek a preliminary ruling from the ECJ on four separate questions, namely:

  1. Under Article 2 of the Directive, which provides that a trademark may consist of "the shape of goods or of their packaging," can protection for the "packaging of goods" also include "presentation of the establishment in which a service is provided?"
  1. Under Articles 2 and 3(1) of the Directive, is a sign consisting of the presentation of the establishment in which a service is provided capable of being registered as a trademark?
  1. Is the requirement that a sign be capable of graphical representation, under Article 2 of the Directive, met by a representation of a design alone, or are additional elements required, such as a description of the layout or statements of the absolute or proportionate dimensions of the space?
  1. Under Article 2 of the Directive, does the scale of protection afforded a trademark for retail services also extend to the products produced by the retailer?

The ECJ combined its analysis of the first three questions, closely scrutinizing Article 2 of the Directive and holding that, as is "absolutely plain" from that Article's language, designs are capable of graphic representation, and a representation that depicts a store layout as an "integral collection of lines, curves and shapes" may function as a trademark, if it is capable of distinguishing the goods and services of one undertaking from those of others. The ECJ declined to attribute significance to the absence of a description of the layout or of an indication of its size and relative proportion. Likewise, the ECJ held that it was not necessary to examine whether a retail store layout might be considered "packaging," as it had already decided that it is a protectable "design" under Article 2.

Regarding the trademark requirement of distinctiveness under Article 3(1)(b), the court held that it "cannot be ruled out" that a retail store layout may allow the products or services for which the registration is sought to be identified with a single source, particularly where the layout varies significantly from the norm or custom in the applicable sector. Whether a given store layout is indeed descriptive or distinctive for particular goods or services and with reference to the perception of the relevant public, is to be determined on a case-by-case basis, as with any other sign submitted for registration. Accordingly, the factors used to assess the registrability of particular designs for the layout of a retail store are no different from those factors used to examine other types of signs.

The ECJ also considered the question of whether services that are "intended to induce" customers to purchase applicant's goods can be services for registration purposes, within the meaning of Article 2 of the Directive. The court answered in the affirmative, with the limitation that the services cannot "form an integral part of the offer for sale of those goods." The court specifically referred to Apple's in-store demonstrations and seminars, which feature the products displayed for sale in its stores, as services that do not form an "integral" part of the sale of the products and thus are capable of registration.

The court held as inadmissible the fourth question posed by the Bundespatent-gericht, namely, whether the scale of protection for retail services also extends to protection for the goods produced by the retailer. The ECJ held that this question had no bearing on the subject matter at hand, namely, the refusal by the DPMA to register the three-dimensional sign for the services specified.

This landmark decision allows for registration, as a trademark or "trade dress," of distinctive store layouts in the European Union. The decision is particularly significant for all brick-and-mortar retailers with distinctive store designs and a presence in Europe, as well as for other businesses with a distinctive presentation of their physical space, such as restaurants and bars. However, retailers seeking to register their store layouts for retail services in Class 35 should ensure that they provide services that are one step removed from the actual offer for sale of their goods, such as the seminars and demonstrations offered by Apple. Additionally, mark owners should be prepared to counter possible objections by registries that do not consider their store layouts to be inherently distinctive, by collecting and maintaining evidence of acquired distinctiveness.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions