3D-Trademark Protection for layout of Apple Stores

The Court of Justice of the European Union (CJEU) has ruld that the layout of an Apple Store in general may be eligible to be registered as a trademark (Case C-421/13 dated 10 July 2014). Background of the Case and Subject Matter In 2010, Apple obtained from the United States Patent and Trademark Office (USPTO) the registration of a three-dimensional trademark consisting of the representation, by a design in color, of its so called “flagship stores” (see below) for retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto.     Subsequently, Apple sought to extend this trademark internationally. In January 2013, the German Patent and Trademark Office (GPTO) refused the extension of that three-dimensional international trademark to Germany because they were of the opinion that the depiction of the space devoted to the sale of the Apple’s products was nothing other than the representation of an essential aspect of that company’s business. The GPTO 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. Therefore Apple, appealed to the German Federal Patent Court against the GPTO’s refusal decision. The German Federal Patent Court considered that the layout depicted by the three-dimensional trademark has features that distinguish it from the usual layout of retail stores in that electronic sector. But, the court was not sure if it is compatible with European law. Therefore, it asked the CJEU for a Preliminary Ruling. Preliminary Ruling The CJEU decided that the representation by a design of the layout of a retail store may be registered as a trademark 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 and that registration is not precluded by any of the grounds for refusal set out in that directive. Therefore, the German Federal Court now has to decide if Apple's “flagship store” (a) constitutes a sign, (b) is capable of graphic representation and (c) is capable to distinguishing Apple's goods and services from those of other companies.