Retail store layouts may be registrable as trade marks

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Article 2 of the Trade Marks Directive[1] provides that a trade mark can consist of any sign capable of being represented graphically, including personal names, designs, letters, numerals, the shape of goods and their packaging so long as the sign is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

In 2010 Apple obtained a US trade mark registration of the design of its flagship stores in respect of retail store services, such as product demonstration services. Under the 1981 Madrid Agreement Concerning the International Registration of Marks (the Agreement), it is possible to obtain a series of national trade mark registrations in countries that are party to the Agreement. Apple applied for an international trade mark registration under the Agreement. The application was unsuccessful in Germany on the ground that consumers would not see the sign as indicative of commercial origin nor was the store that was depicted sufficiently distinguishable from the stores of other retailers.

On appeal to the Federal Patent Court of Germany, the Court decided to refer a number of questions to the Court of Justice, notably whether “packaging of goods” for the purposes of Article 2 encompassed the presentation of the establishment in which the services were provided.

The Court of Justice answered this question in the affirmative. It stated that the representation, by a design alone, without indicating the sign 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 application for registration from those of other undertakings.

In determining registrability it would be necessary to consider whether the layout in question departed significantly from the norms or customs of the economic sector concerned. This would be assessed by reference to the goods or services in question and with regard to the perception of the relevant public.

It should be noted that the Court did not itself decide on whether Apple’s layout was sufficiently distinctive to merit registration as a trade mark.

That, following the Court’s ruling, it is now clear that the design of a layout of a retail store may be registered as a Community trade mark, so long as the applicant can establish that the sign is capable of distinguishing its services from those of other undertakings, brings the position in the EU into line with that in the United States. The decision will be welcomed by those businesses, notably franchises, for whom, a distinctive store layout is particularly important.


[1] 2008/95/EC