The Court of Justice of the European Union has overturned a 2013 ruling by the German Patent and Trademark Office that had previously held that Apple, Inc.’s (“Apple”) retail store design was ineligible for trademark registration. Apple had already successfully registered the trademark in the United States and was relying on that 2010 registration to seek international protection under the Madrid Agreement. As many trademark lawyers already know, many parties to the Madrid Agreement may choose to accept the registration, while other member countries may not. In this case, the German Trademark Office ruled that Apple’s trademark was “nothing more than an essential element of Apple’s business that did not indicate its commercial origin.” In other words, the German Trademark Office was arguably saying that the retail store’s design did not function as an indicator of the source of goods.

Apple appealed this decision to Germany’s Federal Patent Court, which, in turn, referred several questions to the Court of Justice of the European Union (“CJEU”).

In a surprisingly short decision, (approximately thirty paragraphs for a decision that many trademark lawyers predict will be precedential for years to come), the CJEU held that a trademark representing the layout of a retail store of a manufacturer of goods could be successfully registered for services as well, as long as the services did not also form an integral part of the offering for sale of the goods. In other words, it appears that the CJEU was primarily concerned with whether or not Apple’s design was functional or purely aesthetic.

As such, the CJEU specifically noted that it was necessary to ascertain each mark on a case-by-case assessment and the mark should be analyzed in regard to the goods and services in question as well as in light of the perception of the target consumers.

Source: http://business.financialpost.com/2014/08/07/apple-inc-retail-trademark/

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