Layout of a retail store as a trade mark?

In 2010, Apple successfully registered the trade mark depicted below in the US for "Retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto".

Interestingly, the mark includes a lengthy verbal description which reads more like a patent claim, noting that the mark is intended to represent the design and layout of a retail store and describing features such as "light brown cantilevered shelves below recessed display spaces along the side walls, and light brown rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store".

Apple sought additional protection for the mark in a number of European countries under the international trade mark system. It is noteworthy that the international registration contains a much shorter verbal description, merely stating: "the mark consists of distinctive design and layout of a retail store [sic]". The application was accepted in some countries (eg, Spain and Poland). Others raised objection, including the German trade mark registry. Apple appealed.

The German appeal court referred a number of questions to the CJ to ask whether such a sign was capable of registration as a trade mark (an indicator of commercial origin). In particular it asked whether the requirement that a mark be represented graphically was met by a representation alone, or whether a description of the layout was needed, or other indications relating to size, proportions, etc.

The CJ has confirmed that, in theory, such marks are acceptable without those indications – but with some provisos. The court acknowledged that the layout of a retail store may allow products or services to be identified as originating from a particular undertaking, but gave as an example when that layout departs significantly from the norm or customs of the economic sector concerned.

The court has also made it clear that no other grounds for refusal under European trade mark law should apply. One such ground is that a mark must not consist exclusively of a sign which has become customary in the bona fide and established practices of the trade. Given that restriction, and the fact that the pictorial representation comprising the application arguably resembles the design of many standard retail outlets, Apple's success is by no means guaranteed.

So, in theory the layout of Apple stores is registrable as a trade mark; whether the German registry agrees that Apple has overcome the various legal hurdles outlined above remains to be seen. The CJ's decision does not mean that Apple's mark will automatically be accepted – the court has merely given the green light for the German registry to consider this particular application as a trade mark from a purely conceptual point of view. It will now face the same rigorous examination process as any other mark. The retail store layout is bound to be considered a 'non-traditional' mark (such as a shape or colour) – although the criteria used to assess registrability are the same for all types of mark, in practice such marks have encountered often insurmountable objections in the registration process.

Nevertheless, the case confirms that we are seeing a big shift in European trade mark law, and what may conceivably be registered as a trade mark. Gone are the days when a trade mark was simply affixed to a product, or used to promote a service. Now it seems that consumers can (at least in theory) be literally and physically engulfed by a trade mark whilst availing themselves of a service offered by its owner.

The UK position

Interestingly, the UK designation of the international registration is still pending. Although the UK authorities will have to apply the same guidance from the CJ, they could conceivably come to a different conclusion to the German registry. We await further developments with interest.

Useful link

Full decision of the CJ: http://dycip.com/cjapplestore