European Court of Justice: Graphical representation of the layout of a flagship store can under certain conditions be registered as a trademark

On 10 July 2014, the long-awaited judgment of the European Court of Justice on a reference for a preliminary ruling by the Federal Patent Court asking whether a representation of the layout of a shop can be registered as a trademark (File No. C-421/13, Apple Inc./DPMA) has been delivered.

Not really surprisingly, the European Court of Justice mainly confirms the well-thought-out opinion of the Federal Patent Court.

The European Court of Justice stated that a representation of a sales outlet which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes can be registered as a trademark. It is not relevant that the representation contains information on the size and proportions of the retail outlet shown. Such a drawing can also be appropriate to distinguish the goods or services of a company from those of another. This is, in particular, the case if the lay-out shown differs considerably from the standard or custom of the industry.

The European Court of Justice emphasised however that the general suitability of a sign to be registered as a trademark does not mean that this sign necessarily has a distinctive character. This must be assessed concretely by the relevant authority on the basis of the goods and services included in the application and on the basis of the perception of the relevant public.

Finally, the Court confirms that services intended to induce the consumer to buy the goods of the applicant can in principle be “services” in the meaning of Article 2 of Directive 2008/95. A sign showing the layout of flagship stores of a manufacturer of goods can therefore be registered with legal validity not only for those goods but also for the services if these services are not an integral part of the sale of these goods. Services such as those specified by Apple in the application consisting for example in presentations in such shops of the goods displayed there by means of seminars, can as such constitute services for reward falling under the term “services”.

This judgment of the European Court of Justice confirms the opinion of the Federal Patent Court judges who already clearly tended towards having the sign registered as a trademark. It has now been found by the highest courts that such an illustration can in principle be registered as a trademark for services. In addition, the European Court of Justice has not increased the requirements for a graphic representation of a sign so that size and proportions continue not to be necessary. Whether the sign in the actual case is in fact appropriate so that the consumer understands it as indication of the origin of the goods and services, must now be decided by the Federal Patent Court. According to the grounds of the reference, this of course can be assumed.