ICE trade mark dispute: a chilling reminder to monitor trade mark registers and act against problem trade mark applications!
We take a look at the background and the judgment in the recent ICE trade mark dispute.
The Court of Justice of the EU recently ruled that shop and store designs and layouts may be protectable by registered trade marks, if those designs are capable of distinguishing the goods and services of the owner of the design from those of other companies.
The ruling was a result of a question referred to the CJEU from the German Patents Court.
The German Trade Mark Office had been asked to register the layout of a flagship store of Apple Inc., which it refused on the grounds that the layout of a store was not seen to be an indication of any commercial origin of goods or services.
The Apple Store design
Apple appealed the decision and the German Courts referred the question of registrability to the CJEU to determine if the layout of a store can be registered for services aimed at the inducement of sale of goods or services of the applicant and, if so, whether this was analogous with “packaging” of goods.
The CJEU ruled that in some circumstances it would be possible to register such marks, provided that the layout of the store is sufficiently different from the norms or customary layouts of stores in the same sector.
The CJEU answered the German Federal Patent Court’s question as follows:
“…the representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store, may be registered as a trade mark for services consisting in services relating to those goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings; and, that registration is not precluded by any of the grounds for refusal set out in that directive.”
This ruling paves the way for potential registrations of shop designs, provided all other requirements for registration are met, but the CJEU made sure to point out that decisions on registration will be given on a case-by-case basis and will need to take into account whether mark is descriptive of the goods or services in question.
It should also be noted that Apple has already obtained a trade mark registration in the USA for the same mark. The US trade mark was registered for “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”.
Businesses with distinctive store designs, and other distinctive “get up”, should consider seeking protection for these elements of their identity. However, we anticipate that obtaining registration for store designs such as Apple’s is unlikely to be straightforward.
For more information on this issue and to determine whether your store designs may be registrable as a trade mark in the EU, please contact us for advice and an advisor will get back to you.