Download: 2014 PUB BC Retail store layouts - three dimensional trade marks - 22 July.pdf

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 trade mark.

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 competitors.

In the UK, distinctive décor has been protected under passing off. But actual registration as a trade mark is a new twist.

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 2010.

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 mark.1

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 industry.

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.