Can space be eligible for trade mark protection?

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In recent case Apple Inc. v Deutsches Patent- und Markenamt, Case C‑421/13 the Court of Justice of the European Union (CJEU) has held that a representation by way of a design of the layout of a retail store is capable of registration as a trade mark. The necessary requirement was that the trade mark was capable of fulfilling its essential function by distinguishing the goods and services of the applicant from those of other undertakings.


Apple Inc initially obtained registration of the 3 dimensional trade mark (as depicted below) in the US in November 2010. The registration consisted of a representation (by way of a coloured design) of its stores layout which Apple Inc claimed was 'the distinctive design and layout' for services in class 35 of the Nice Classification. The services specified included: ‘retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto’.

Store space apple trade mark

Apple then pursued international registration of this trade mark under the Madrid Agreement which included registration across the European Union. The registration was opposed in Germany by the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office ‘DPMA’). The Court held that a design portraying the use of space inside Apple stores the purpose of which is to facilitate the sale of its products was 'nothing other than the representation of an essential aspect of that undertaking’s business'. The DPMA stated that consumers would not see layout of retail space as an indication of commercial origin of Apple products and that the layout itself was not sufficiently distinguishable from other undertakings who provide electronic products. Appeal appealed against the DPMA's decision to the Bundespatentgericht.

The Bundespatentgericht decided that fundamental trade mark issues were brought to light in this case; accordingly the Court stayed proceedings and referred 4 questions to the CJEU for a preliminary ruling.

The issues referred

(1) Is Article 2 of the Directive to be interpreted as meaning that the possibility of protection for the ‘packaging of goods’ also extends to the presentation of the establishment in which a service is provided?

(2) Are Articles 2 and 3(1) of the Directive to be interpreted as meaning that a sign representing the presentation of the establishment in which a service is provided is capable of being registered as a trade mark?

(3) Is Article 2 of the Directive to be interpreted as meaning that the requirement for graphic representability is satisfied by a representation by a design alone or with such additions as a description of the layout or indications of the absolute dimensions in metres or of relative dimensions with indications as to proportions?

(4) Is Article 2 of the Directive to be interpreted as meaning that the scale of the protection afforded by a trade mark for retail services also extends to the goods produced by the retailer itself?’


Questions 1, 2 and 3

The CJEU held that Articles 2 and 3 of Directive 2008/95 (the Directive) must be interpreted as meaning 'that the representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store, may be registered as a trade mark 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'.

Question 4

The Court found that the scale of the protection granted by this type of trade mark 'manifestly bears no relation to the subject-matter of the main proceedings' which are concerned with the DPMA's refusal to register the Applicant's mark. Therefore, held that the fourth question was inadmissible and the request for a preliminary ruling on this matter was rejected as it bore no relation to the facts of the proceedings.

Accordingly, this case has set a precedent, although the outcome of this case is interesting, arguably it will also cause great uncertainty in the future for trade mark law. Apple has now paved the way for other similar outlets to follow suit. The CJEU did note that such cases had to be assessed on a case-by-case basis with regard to the relevant authority. Despite this, it will be interesting to observe the courts reaction if and when Apple begins to enforce its rights.

For more information or advice about trade mark protection please contact the Blake Morgan intellectual property team

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