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22-07-2014 » When does the representation of a sales floor constitute a trade mark?

Judgment C-421/13, rendered on July 10, 2014, gave the Court of Justice of the European Union (CJEU) an opportunity to rule on whether or not a representation such as the one below, filed in class 35 for "services of retail related to computers, software, peripherals, mobile phones, consumer electronics and accessories and demonstration of related products" is protectable as a trademark.

This trademark, registered by APPLE, was accepted without difficulty by the USPTO (United States Patent and Trademark Office).

In contrast, when the American company wished to extend its protection through an International registration, it met with refusal from several national offices. The German Office in particular refused registration on the grounds that the representation of an area dedicated to the sale of a company's goods was tantamount to representing an essential aspect of this trade, which the consumer would not understand as being an indication of origin.

However, on appeal before the Bundespatentgericht, the latter considered that the configuration as filed presented characteristics which distinguished it from the usual layout of retail areas in the economic sector in question, and thus stayed the proceedings and referred various preliminary questions to the CJEU, including the question of whether a sign, reproducing the presentation embodying a service, could constitute a trademark.

In its recent decision the CJEU  first recalled that under Article 2 of EU Directive 2008/95 of 22 October 2008 to approximate the laws of the Member States relating to trade marks, a trademark may consist of "any signs capable of being represented graphically ... capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

A drawing is capable of being represented graphically, and so the representation which shows the layout of a retail area through a continuous set of lines, contours and shape may thus constitute a trade mark if it is capable of distinguishing the goods or services concerned from those of other undertakings. In order to do so, there is no need to indicate size or proportions. The ECJ thus stated that it cannot be excluded that the layout of a retail area, visualized by the filed trademark, may make it possible to identify the goods or services referred to in the application as originating from a particular undertaking, and that such may be the case if the considered layout departs significantly from the norm or what is customary in the sector in question.

However, the general ability of a sign to perform the function of a trademark does not imply necessarily that the sign is distinctive. The distinctive character of a mark must be assessed in concreto in relation to the designated goods or services and in relation to the perception of the relevant public. The CJEU considered from this point of view that, in this case, the assessment criteria to be used were not different from those used for other types of signs.

The Court also recognized that this representation of the layout of a retail area can be registered not only for goods but also for services. The latter must however be services other than the simple sale of goods (for which the trademark would be descriptive), and may consist of services such as demonstrations of goods presented through seminars, which are paid services falling within the notion of services.

Finally, the CJEU noted that the question of what the scope of protection conferred by such a trademark can be, is unrelated to the subject matter of the legal proceedings.

In conclusion, the Court of Justice of the European Union therefore recognized that the representation of a store can be registered as a trademark, subject to it having a distinctive character for the designated goods and services as well as compliance with the other conditions laid down by the Directive. We can deduce from this that the particular appearance of a point of sale, restaurant or hotel and so on may also be filed as a trademark under the same conditions, which is good news for those who seek to protect the visual identity of their business.

However, the debate on the scope of protection that can be claimed for such trademarks remains wide open.

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