Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

CJEU rules store design can constitute a trade mark

In a victory for Apple, Europe’s highest court has told retailers that they may be able to secure trade marks for their store layouts if the design is capable of distinguishing their goods and services from those of other businesses

The Court of Justice of the EU was ruling in a case referred to it by the German Federal Patents Court.

The country’s Patent and Trade Mark Office had been asked to register an international mark filed by Apple representing the layout of its flagship retail stores. The Office declined, arguing that the depiction of the space devoted to the sale of Apple’s goods simply constituted a representation of an essential aspect of its business and that consumers would not see it as an indication of the commercial origin of the goods.

Apple appealed, and the German court asked the CJEU whether the representation of the layout of a retail store, by a design alone, without any indication of size or proportions, may be registered as a trade mark for services aimed at inducing the consumer to purchase the goods of the applicant for registration and, if so, whether such a “presentation of the establishment in which a service is provided” may be treated in the same way as “packaging”.

Today the Court reconfirmed that trade marks must constitute a sign; be capable of graphic representation; and be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

It went on to say that it cannot be ruled out that the layout of a retail outlet may allow customers to identify goods or services as originating from a particular undertaking.

“As the French Government and the Commission have submitted, this could be the case when the depicted layout departs significantly from the norm or customs of the economic sector concerned,” said the Court.

But the judges went on to emphasise that signs that can constitute a mark do not necessarily possess a “distinctive character” within the meaning of European trade mark law. National courts need to assess whether they have distinctive character by considering the goods or services in question and the perception of the relevant public. They also need to make a case-by-case assessment that considers whether the sign is descriptive or whether there are any other valid grounds for refusal.

The Court also ruled that if the sign can be registered for goods, it can also be registered for services, as long as they do not form an integral part of the offer for sale of those goods. In the case of Apple’s application, services such as holding seminars to demonstrate the products as a way of encouraging people to buy them may constitute remunerated services falling within the concept of “service”.

You can read more about the background to the case, and ways of protecting store designs, on Managing IP.

more from across site and ros bottom lb

More from across our site

Civil society and industry representatives met in Geneva on Thursday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Shira Perlmutter, US Register of Copyrights, discussed the Copyright Office's role in forming generative AI policy during a House of Representatives hearing
The award marks one of the highest-ever damages received by a foreign company in a trademark infringement suit in China
Two orders denying public access to documents have reignited a debate over a lack of transparency at the new court
Rouse’s new chief of operations and the firm’s CEO tell Managing IP why they think private equity backing will help it conquer Europe
Brian Landry, partner at Saul Ewing, reveals how applicants can prosecute patent applications in the wake of the Federal Circuit's In re Cellect ruling
Ronelle Geldenhuys of Australia’s Foundry IP considers the implications complex computer technologies such as AI have on decision-making