The German Federal Patent Court recently confirmed the decision that the design of the layout of a retail store can potentially be registered as a trademark. In Apple Inc. v Deutsches Patent- und Markenamt, Apple sought to register a representation that it described as “the distinctive design and layout of a retail store” as a trade mark.
Apple has successfully registered similar trademarks in the US for a trademark consisting of the a colour representation of its flagship stores for services within Class 35 which covers “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”.
Apple sought to extend the registrations internationally, but found that the registration was initially refused in Germany on the basis that it only represented an essential aspect of Apple’s business and see it as an indication of Apple’s products commercial origin. Court also held that the design and layout was not sufficiently distinguishable from other retailer’s stores.
Apple argued that a trademark must be a sign that distinguishes goods and is capable of being represented.
Apple satisfied these criteria on the basis that:
- a representation that of the layout of a retail store by means of lines, curves and shapes, may constitute a trademark if it is capable of distinguishing the products or services;
- a representation of a layout did not need to set out the size or proportions of the retail store or to examine whether the design could be treated in the same way as “packaging” as it was presentation of the establishment in which the service is provided; and
- a representation by a design of the layout of a retail store is also capable of distinguishing products or services of one undertaking from those of another.
However, a trademark can only be registered if it has a distinctive character cannot be registered.
The outcome of this matter is that retailers who have a unique design or layout will need to show that it is distinctive and represents their products and services in order to be a registered trademark.
Trademarks give you powerful protection over your brand. Owning your trademark grants you exclusive use in association with your brand, good or service. Trademarks protect your business from your competition being able to use a similar logo or mark. By registering a trademark, you are creating a business asset that has value and can be licensed and sold.
Our team can help you with all aspects of Intellectual Property and Trademark Law including advise on selecting and registering your brand, conducting trademark searches, preparing and filing trademark applications to assignments and licensing, searching and watching, infringements, renewals, due diligence, oppositions, litigation support, litigation and dispute resolution and commercialisation advice and assistance.