Apple Able To Register EU Trademark In Store Layout

Apple Inc. v. Deutsches Patent- und Markenamt (Case C-421/13, July 10, 2014)

On July 10, 2014, the Court of Justice of the European Union (ECJ) ruled that Apple Inc.'s design for its flagship store is capable of protection as a three-dimensional trademark, under Articles 2 and 3 of the Community Trade Mark Directive (No. 2008/95/EC) ("Directive"). The case was taken up for preliminary ruling by the ECJ following rejection by the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office or "DPMA") of Apple's request for extension, to Germany, of its international trademark registration of a color representation of its store layout for "retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto" in Class 35. The mark was registered in the U.S. on January 22, 2013, and has also been extended to Israel, Spain and Italy, though it has faced rejections in multiple other jurisdictions in addition to Germany. The mark is reproduced below.

The DPMA based its rejection in Germany on the ground that the store layout is not an indication of origin but rather a representation of an integral part of Apple's business. It also held that the mark is not sufficiently different from the store layout of other electronics retailers to serve as an indication of source for Apple, alone. Following rejection by the DPMA, the case was transferred to the Bundespatent-gericht, Germany's patent court with jurisdiction over industrial property rights, which held that the store layout is indeed distinctive and capable of protection, but which stayed the proceedings to seek a preliminary ruling from the ECJ on four separate questions, namely:

Under Article 2 of the Directive, which provides that a trademark may consist of "the shape of goods or of their packaging," can protection for the "packaging of goods" also include "presentation of the establishment in which a service is provided?" Under Articles 2 and 3(1) of the Directive, is a sign consisting of the presentation of the establishment in which a service is provided capable of being registered as a trademark? Is the requirement that a sign be capable of graphical representation, under Article 2 of the Directive, met by a representation of a design alone, or are additional elements required, such as a description of the layout or statements of the absolute or proportionate...