The Court of Justice of the European Union (CJEU) confirmed earlier this year that a 3-D representation of a shop layout can, in principle, be registered as a trade mark.

If you are a retailer or an interior designer or brand manager working with retail you should be aware of the impact of this decision. It provides another way for brands to cement their corporate personality into intellectual property assets (in this case trade marks) which can then be leveraged to further distinguish the brand from competitors.

The case arose because Apple sought to extend its US trade mark for a representation of its store layout internationally through an international trade mark application (using what is called the Madrid Protocol). This included a trade mark application in Germany. The German courts first rejected the trade mark application, but on appeal from Apple sought clarification from the CJEU as to whether a store layout was capable of being registered as a trade mark.

The CJEU’s answer was yes, a store layout could be registered as a trademark provided it met certain criteria. A trade mark can consist of any sign which is capable of being represented graphically. Most often this is a business name or logo, but it will also include designs, shapes or packaging of goods. Whether it is a word, logo, or design, the mark applied for must be capable of distinguishing the goods or services of one brand from another. The CJEU determined that a representation of a store layout would be a graphical design and it therefore met the first hurdle, unlike, for example smells or sounds which despite their potential distinctiveness cannot be represented graphically.

The second vital requirement was that the trade mark store layout must be capable of distinguishing the trade mark owner’s goods. This means that the trade mark, i.e. the representation of the store layout, calls to the mind of a reasonably well-informed member of the public the name of the trade mark owner. This is unlikely to be an easy test to pass. The CJEU advised that the layout would have to depart significantly from the customs or norms of the relevant retail sector.

The CJEU left it to the German court to determine if the Apple layout is sufficiently unusual to attract trade mark protection, and we have not yet heard their decision, but the CJEU said that it “has features that distinguish it from the usual layout of retail stores in that industry” which perhaps signals the likely ultimate result.

If you are a retailer and are keen to see if you could register a trade mark for the representation of your store layout consider:

  • Do you have a “signature” store layout?
  • Do you consider (or know) your signature layout to be something that your customers consider to be distinctly yours?
  • Is your signature store layout noticeably different to those of your competitors?

If the answer to all the above questions is “YES” then you may be able to register your store layout as a trade mark. If you further questions about this or your intellectual property portfolio please contact us.