Apple continues to blaze a trail with its intellectual property protection, as the European Court of Justice (ECJ) holds a design of its high street stores is capable of constituting a trade mark for services inducing customers to buy the must-have products.
The technology giant had first obtained registration for the store layout in the United States, before applying to extend the scope of that protection on an international basis. German registrars opposed the extension on the basis that that the store design did not satisfy the criteria for trade mark protection in Europe.
Upon reviewing the criteria, the ECJ confirmed that the design of a store layout could potentially constitute a ‘sign’, which is represented in a graphical form and distinguish one company’s goods from those of another.
It was also not a bar to Apple’s application that they sought protection for the services – namely retail store services featuring computers, mobile phones for example and related accessories and demonstrations - as opposed to the products themselves. Nor did Apple need to set out the precise or relative dimensions of the store layouts protected in order to satisfy the criteria in principle.
The decision is significant and, some might say, slightly surprising in light of the rigid criteria which has been applied to applicants previously seeking protection of colours, shapes and other more abstract marks. For example, in recent years Dyson’s transparent vacuum bin, Cadbury’s purple packaging and Scrabble’s alphabet tiles have all run into difficulty with trade mark registration and applications on the basis that they protected various conceivable uses of the relevant mark, beyond the representation set out in the application.
Nevertheless, in theory Apple appear able to apply their layout trade mark to stores of varying shapes and sizes. It will be interesting to see whether other retailers with iconic store designs now seek to follow in Apple’s wake and, more importantly, the scope of protection the Courts will afford to any registration in the event it is subject of infringement proceedings.
Taylors’ Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion and home furnishings sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).
If you have any queries, please do not hesitate to contact Tony Catterall, Head of our Intellectual Property team, on 0844 8000 263 or via email firstname.lastname@example.org