Who doesn’t recognize an Apple store at first sight?
That was one of the main reasons why in 2010 Apple Inc. started the process of
registering its business model as a three-dimensional trademark. Apply took two
trademarks it already held as the foundation from which to kick off its 3-D
trademark expansion strategy. These trademarks showed a black-and-white design
of the store (US, 12.05.2010, No. 85,036,990) and a colour design (US,
12.05.2010, No. 85,035,986).
Both three-dimensional trademarks were granted by the
U.S. Patent and Trademark Office for class 35 of the Nice Classification,
which covers “Retail store services
featuring computers, computer software, computer peripherals, mobile phones,
consumer electronics and related accessories, and demonstration of products
relating thereto”.
Later, Apple applied to extend its trademark to
another 19 countries, including Spain. In 2011 the trademark was granted by the
Spanish Patent and Trademark Office.
Of all the latter proceedings, the most striking refusal
was certainly that of Germany. In 2013 the German trademark office, the DPMA,
refused to extend its registration of IR No. 1,060,320 and No. 1,060,321,
because it considered that the representation of spaces intended for the sale
of an undertaking’s products is merely a representation of an essential aspect
of an undertaking’s trade. In the DPMA’s view, although a consumer may indeed interpret
the layout of the space as an indication of the value and price category of the
products within, the consumer will not perceive the layout as an indication of
the origin of the products. In other words, the DPMA felt that the retail space
represented was not sufficiently differentiated from the stores of other
suppliers of electronic products.
For that reason, the German Patent Court submitted a
request for a preliminary ruling to the Court of Justice of the European Union,
which found for Apple Inc. The court said that “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”.
Applications No. 1,060,320 and 1,060,321 were
refused in China, Great Britain, Sweden and Singapore on absolute grounds, the
main obstacle being the descriptive or customary nature of the
three-dimensional sign in each registration application.
Despite the drawbacks, this is a clear example of
innovation in industrial property in favour of franchises or retail chains in
which the point of sale differentiates the product from other products on the
market.
Carolina Sánchez Margareto
IP lawyer
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