On July 10, 2014 the Court of Justice of the European Union (the "CJEU") issued its decision in Apple Inc. v. Deutsches Patent und Markenamt1 and recognized the possibility to register a three-dimensional representation of the design and layout of a retail store as a Community Trade Mark.

In May 12, 2010, Apple Inc. ("Apple") filed two applications for marks that are described mainly as the design and layout of a retail store.2 The United States Patent and Trademark Office (the "USPTO") granted registration on January 22, 2013. The trademarks are each represented by a three-dimensional representation of the front and inside of an Apple store. One of the representations is in black and white and the other is in colour and includes steel gray, light brown and black. Both trademarks were registered in association with services within Class 35 of the Nice Classification system which includes "retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto."

Apple then tried to expand internationally, under the Madrid Agreement, the protection of its stores' design and layout through the coloured three-dimensional representation.  Apple's efforts failed in Germany; the Deutsches Patent- und Markenamt, the patent and trademark office of Germany (the "GPTO"), rejected Apple's application on the basis that consumers would not see this particular design and layout of a store as an indication of the commercial origin of the products sold therein. Apple appealed the GPTO's decision to the Bundespatentgericht, which then requested the CJEU's help to interpret Articles 2 and 3 of Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008 which aims to harmonize the laws of the member states of the European Union relating to to trademarks to ensure the free movement of goods and services.

In its ruling, the CJEU held that "the representation, by a design alone, without indicating the size or proportions, of the layout of a retail store, may be registered as a trade mark for services consisting in services relating to those goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings"3 and that there are no grounds for refusal or invalidity on that basis alone. The CJEU also recalled that in order to constitute a  trademark, the subject-matter must essentially be a sign capable of graphic representation which distinguishes the goods or services from those of other undertakings. Since the CJEU's decision only deals with the interpretation of the applicable European Union trademark legislation, it remains to be seen whether the Bundespatentgericht will determine that Apple's application in fact meets the requirements outlined by the CJEU to be successfully registered as a trademark in Germany.

The CJEU ruling was certainly positively welcomed by retailers, especially franchises. The business models of franchises, which rely heavily on the display of a consistent layout and design for their locations, can now be granted trademark protection against replicas. The CJEU's decision also shows a willingness from courts to grant trademark protection to new and non-traditional commercial signs and representations.

Finally, it is worth mentioning that Apple also filed two trademark applications with the Canadian Trade-marks Office ("TMO") in November 12, 2010 for the same two three-dimensional representations that were granted registration as trademarks by the USPTO.4The applications have not been granted yet and it will be interesting to see whether this recent CJEU decision will have an impact on the final decision of the TMO.


1 Available online at :http://curia.europa.eu/juris/document/document.jsf?text=&docid=154829&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first∂=1&cid=398372.

2 Serial Numbers: 85036986 and 85036990.

3 At para. 27.

4 Application Numbers: 1503649 and 1503650.

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