Design of Apple Stores as a protectable mark?

The well-known company Apple filed a three-dimensional mark for certain retail services with the United States Patent and Trademark Office (USPTO) in 2010. The representation submitted for this purpose shows the interior of a retail store (see below in this article), namely Apple's flagship stores. The mark was registered in the USA and later extended internationally to numerous countries, including Germany. The DPMA rejected the extension on the grounds of lack of distinctiveness, which is why, at Apple's instigation, the BPatG and the EuGH are now required to decide on the matter.

The DPMA argued in the initial decision that the representation of a store interior was not suitable for distinguishing the goods and services of one enterprise from those of another enterprise. The mark therefore lacked the required distinctiveness. The image was merely a representation of an essential aspect of the retail services provided by the applicant company in this retail store. For this reason, the target customers would not understand the store interior as an indication of the origin of these services.

Against this, Apple filed an appeal with the BPatG, which in turn referred the question to the EuGH in preliminary ruling proceedings. The BPatG wishes to know from the Court whether the representation of the fixtures and fittings of a retail premises can be registered as a mark for services intended to induce the consumer to purchase goods and whether such an arrangement, in which a service is embodied, can be equated with the presentation of a good.

The Court's decision

The EuGH states in its judgment of 10.07.2014 (Az. C-421/13) that the representation of the fixtures and fittings of a retail premises by means of an entity consisting of lines, contours and forms can be a mark, provided that it is capable of making the goods or services of the enterprise distinguishable. A sufficiently concrete reference to origin comes into consideration if the fixtures and fittings deviate substantially from industry standards or customary practice. However, this must always be examined with regard to the specific goods and services claimed in individual cases. In this respect, nothing else applies according to the Court's reasoning than for other mark forms.

The Court further takes the view that the fixtures and fittings of a retail premises can be registered not only for goods manufactured by the mark proprietor and sold there, but also for services, provided that these are not an "integral part" of the sale of these goods. This applies, for example, to demonstrations of the goods offered by means of seminars, because these have nothing to do with the sale as such.

Conclusion

This pronouncement by the EuGH is likely to attract considerable attention because the fundamental recognition of the protectability of store fixtures and fittings as trade marks basically enables unlimited design protection, as would not be possible under design or registered design law. However, the Court only ruled on the basic distinctiveness of store fixtures and fittings, not on whether this actually exists in the present case. The BPatG will now have to decide on this.

The chances of worldwide protection of the Apple Flagship Stores' interior design are, by the way, poor: the mark was denied protection in almost every jurisdiction.