Got up again!

In March 2013 I reported (‘Get Up and Go’) that Apple Inc. had managed to register in the USA designs as trademarks in relation to their retail services comprising detail of a combination of interior features of their retail outlets (e.g. use and disposition of glass, and the nature and disposition of shelving, video screens and tables).

They then filed an International application to extend this protection and encountered a refusal from the German PTO, saying that the layout would not be seen as an indication of commercial origin, was only a representation of an aspect of Apple’s business and was not sufficiently distinguishable from other electronic product stores.

Apple appealed to the German Federal Patent Court.  The Court took the view that the layout had some distinguishing features but referred some questions to the CJEU regarding whether the presentation could constitute a trademark under Articles 2 and 3 of the Trade Marks Directive (2008/95/EC).  These require that a trademark must be a sign; it must be capable of graphic representation: and it must be capable of distinguishing the goods or services of one undertaking from those of another.

In a short decision the CJEU found for Apple on all points.  The same criteria apply to all types of trademark and designs were forms of graphic representation which could constitute a trademark provided they were capable of distinguishing the products or services of one undertaking over those of another.  Such a representation need not specifically indicate the size or proportions of the outlet depicted.  The distinctive character of the sign still had to be assessed by the settled criteria having reference to the goods or services in question and the perception of the relevant public.  It was also agreed that a sign depicting the layout of the stores of a goods manufacturer may legitimately be registered not only for the goods themselves but also for services which do not form an integral part of the offer for sale of those goods.

The door is therefore open for those who run commercial outlets with distinctive layouts to seek to protect details of that layout, though evidence of acquired distinctiveness and to show that the layout differs from norms in the sector is likely to be required in many cases.

Chris Pett, Consultant

Christopher Pett
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