Is the Fit-out of Sales Premises a Trademark? Ruling of the Court of Justice of the European Union

In a recent case, the Court of Justice of the European Union (Court of Justice) ruled that a simple drawing of sales premises for goods, without any indication of dimensions or proportions, can be registered as a trademark for services involving provisions related to those goods, but which do not constitute an integral part of admitting them to trade. One of the conditions making it possible to register such a depiction as a trademark is that the depiction makes it possible for the services concerned to be differentiated from those of other businesses. A second condition is that the registration does not meet any of the grounds for refusal of a registration specified in Directive 2008/95/EC.

On 10 July 2014, in issuing a ruling in the case of Apple Inc. (Apple) against the German Patent and Trademark Office (C-421/13), the Court of Justice stated how Articles 2 and 3 of Directive 2008/95/EC should be interpreted. Article 2 of the Directive defines what designations can comprise a trademark, while Article 3 provides the grounds for refusing or ascertain the validity of the registration of a trademark.

The history of this dispute is as follows. On 20 November 2010, the U.S. Patent Office registered a three-dimensional trademark showing a colored drawing (mainly steel gray and light brown) of an Apple flagship. That registration was made for services in Class 35 in the meaning of the Nice Treaty, that is, various services aimed at convincing consumers to purchase Apple products.

On the basis of the Madrid Treaty, Apple then submitted an application for the territorial expansion of the protection resulting from the international registration of the above trademark. That application was accepted in certain states, while in others, such as Germany, that protection was not granted. On 24 January 2013, the German Patent and Trademark Office refused to grant protection to the three-dimensional international trademark (IR 1060321) in Germany because a depiction of premises designated for selling goods is nothing other than a depiction of an essential feature of the business activities of the company, but does not indicate the origin of those activities.

Apple filed a complaint against the decision of the German Patent and Trademark Office with the Federal Patent Office (Bundespatentgericht), which acknowledged that the case involved fundamental issues of trademark law and referred four pre-trial questions to the Court of Justice in respect of the provisions of Directive 2008/95/EC referred to above.

The Court of Justice mainly considered whether the relevant provisions of Directive 2008/95/EC must be interpreted such that a depiction (in the form of an ordinary drawing without any indication of dimensions or proportions) of how sales premises are fitted out can be registered as a trademark for services involving various provisions aimed at convincing customers to purchase goods of the applicant and whether such a “depiction of materialized services” can be equated with “packaging”.

As indicated at the beginning of this article, the Court of Justice took the position that, such a presentation as that in the dispute under discussion, which depicts how sales premises are fitted out by means of a set of lines, contours and shapes, may constitute a trademark, on condition that it makes it possible to distinguish the goods or services of one business from those of other businesses. None of the grounds for refusing registration as specified in Directive 2008/95/EC come into play.

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