The Court of Justice of the European Union (CJEU) gave its keenly-awaited ruling today in Case C-421/13 Apple Inc. v Deutsches Patent- und Markenamt, affirming that the same criteria for registrability apply to all types of trade mark.

In 2010 Apple registered the three-dimensional trade mark depicted on the right in the United States. The mark consisted of a representation, by a multicoloured design, of its flagship stores. That trade mark was registered for ‘retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto’.

Apple subsequently sought to extend that trade mark internationally. In 2013, its extension to German territory was refused by the German Patent and Trade Mark Office (DPMA) on the ground that the depiction of the space devoted to the sale of the undertaking’s goods was nothing other than the representation of an essential aspect of that undertaking’s business and that consumers would not see it as an indication of the commercial origin of the goods.

Apple appealed to the Bundespatentgericht, which in turn asked the CJEU if the representation of the layout of a retail store, by a design alone, without any indication of size or proportions, may be registered as a trade mark for services aimed at inducing the consumer to purchase the goods of the applicant for registration and, if so, whether such a ‘presentation of the establishment in which a service is provided’ may be treated in the same way as ‘packaging.’

The CJEU today affirmed that, to be capable of constituting a trade mark, the subject-matter of the application must, under the trade mark directive, satisfy three conditions. It must (1) constitute a sign, (2) be capable of graphic representation and (3) be capable of distinguishing the ‘goods’ or ‘services’ of one undertaking from those of other undertakings. On this basis a representation like Apple's here, which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark if it is capable of distinguishing the goods or services of one undertaking from those of other undertakings. Further, the layout of a retail outlet depicted by such a sign may allow the goods or services for which registration is sought to be identified as originating from a particular undertaking, eg where the depicted layout departs significantly from the norm or customs of the economic sector concerned.

However, that the fact that a sign is generally capable of constituting a trade mark does not imply that the sign necessarily possesses a distinctive character: this must be assessed in practice by reference to the goods or services in question and the perception of the relevant public. The competent authority must also determine whether the sign is descriptive of the characteristics of the goods or services concerned, or whether it gives rise to one of the other grounds for refusing the registration laid down in the directive.

Finally, as regards the question of whether services aimed at inducing the consumer to purchase the goods of the applicant for registration can constitute ‘services’ for which a sign may be registered as a trade mark, the CJEU considered that, if none of the grounds for refusing registration laid down by the directive precludes it, a sign representing the layout of the flagship stores of a manufacturer of goods may lawfully be registered not only for those goods but also for services, so long as they do not form an integral part of the offer for sale of those goods. Services which, like those mentioned in Apple’s application, consist, for example, of carrying out, in such stores, demonstrations of the products by means of seminars may in themselves constitute remunerated services falling within the concept of ‘service’.

Accordingly the representation of the layout of a retail store, by a design alone, without indicating the size or the proportions, may be registered as a trade mark for services which, although relating to goods, do not form an integral part of their offer for sale, on condition that that representation is capable of distinguishing the services of the applicant for registration from those of other undertakings and that no ground for refusal precludes it.