CJEU Says Apple Store Design May Be Able To Be Trade Marked

Tuesday 15 July 2014 @ 10.36 a.m. | IP & Media

The European Court of Justice (CJEU) has made a preliminary ruling in Apple Inc v Deutsches Patent –und Markenamt (C-421/13, 10 July 2014) that Apple’s retail store layouts may be able to be registered as a trade mark in the European Union.  Apple obtained a trade mark in the US in 2010, and has recently been seeking to extend it to other markets.  It sought recognition of the mark internationally under the Madrid Agreement concerning the International Registration of Marks.  The Deutsches Patent -und Markenamt ("the DPMA") rejected the application:

"on the ground that the depiction of the space devoted to the sale of the undertaking’s products was nothing other than the representation of an essential aspect of that undertaking’s business. The DPMA considered that while it is true that consumers may perceive the layout of such a retail space as an indication of the quality and price bracket of the products, they would not see it as an indication of their commercial origin. Besides, it considered that the retail store depicted in the case before it was not sufficiently distinguishable from the stores of other providers of electronic products." [at 11]

Apple appealed to the Bundespatentgericht (the Federal Patent Court of Germany, or BPatG), who stayed the proceedings to refer several questions of European law to the CJEU, including whether protection for the packaging of goods’ should extend to the presentation of the establishment in which a service is provided, and whether the requirement of graphic representability could be satisfied by a design alone without indications of precise measurements.

The CJEU said for the store design to be able to constitute a trade mark it must be a sign, capable of graphic representation and capable of distinguishing goods or services.  They did not believe it was necessary for the design to carry any measurements, providing the design was distinctive enough to make differentiation possible.  As the legislation does not distinguish between types of marks, the Court found that the normal assessment criteria should be applied.

The CJEU also found that Apple could apply to register store layout not only for the goods themselves, but also for services such as “carrying out, in such stores, demonstrations by means of seminars of the products that are displayed there” [at 26].

Apple must still prove in Germany that its store layout is “capable of distinguishing” its products and/or services.

What’s in the Patent?

According to Bloomberg Businessweek, some of the protected design elements in Apple’s US Patents include:

  • “cantilevered shelved below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls… a oblong table with stools located at the back of the store, set below video screens…”
  • “the color(s) steel gray, light brown and black”
  • “a clear glass storefront surrounded by a panelled façade”.

There have been reports of fake Apple stores, including one from Wired UK in 2011 about a store in Kunming, China, that was “complete with the store’s trademark spacious, airy interior, blue-shirted staff, products to play with, and upstairs seating area.”

In Australia

Susan Walsh from Swaab Attorneys told SmartCompany that:

“The definition of what constitutes a trademark under the relevant European directive is a little bit different to our definition here… It includes design and shape of goods and of their packaging”.

Since under Australian law trade mark and designs are separate branches of intellectual property law, it may be more difficult to mount a similar argument.  However, Walsh highlighted the fact that the “concept of a trademark continues to evolve”, saying:

“Eagle Boys Pizza has registered the pink glow associated with its neon signage… That’s part of a move towards registering more of those marks that encompass the brand’s look and feel.”

TimeBase is an independent, privately owned Australian legal publisher specialising in the online delivery of accurate, comprehensive and innovative legislation research tools including LawOne and unique Point-in-Time Products.

Sources:

Related Articles: