30 Sep 2014

Is trademarking store design more than just window dressing?

Apple's win in the European Courts, which paves the way for retailers to trade mark store layouts, is groundbreaking. But it may founder on attempts to enforce it, according to industry insiders.

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In July the CJEU ruled that the representation of the layout of a retail store may be registered as a trademark. Apple had previously registered a 3D trademark for its store layout in the United States. To qualify for trademark registration the store design has to “significantly depart from the norm of the relevant industry sector”. The Luxury Law Legal Post was told by insiders that Apple made its case not only on the physical appearance of the store, but also on the customer experience in store. So as well as the simplicity of the store, it highlighted aspects such as that all the equipment is out for customers to play with for as long as they wish and products are set out for ease of use; that it is user-friendly for women; and that it welcomed children. This, Apple claimed, departed from a usual electrical store structure.

Services covered

Commenting on the case, Birgit Clark, Partner at Venner Shipley said:  “The depiction of the layout of the flagship store of a goods manufacturer, such as Apple, can thus not only cover the goods but also services the manufacturer may wish to offer, provided these services do not form an integral part of the offer for sale of those goods. In the case of Apple's trade mark, the specification encompassed ‘the carrying out of in-store demonstrations by means of seminars of the products on display’.”

A wider definition of trademarks

The decision is groundbreaking not for the development of any new legal principles, but because it means courts are willing to entertain a wider definition of a trademark.  “They are taking into account that a brand is more than a logo and a word,” said one expert. “It shows how trade mark law is evolving and what ‘signs’ modern consumers will interpret as trade marks. What signs are functioning as ‘a badge of trade origin’ clearly has changed: three dimensional trade marks, colours, sound marks, and now store layouts,” said Clark.

Enforcement may be difficult

The judgement opens the path for Apple to obtain a trademark covering store layout in Germany (its Patent and Trademark Office had previously refused it).  Should it go forward, other luxury retailers are likely to follow suit. But enforcing it will be difficult. Apple is seeking to protect the format of its stores, including the arrangement and positioning of tables in its stores, so copycats need only to have the tables higher, the windows a different shape, and it will be hard to get a judge to say it is infringement.  “The definition of what such a store layout trade mark can cover will not only have to be highly distinctive but will also have to be precise and clear, which in turn will affect the scope of the legal protection awarded. Such a store layout trade mark will, in all likelihood, only allow to stop other retailers from using highly similar and near-identical formats,” said Clark.

Identical stores

Apple has previously had problems in New York and Brooklyn with stores which were an absolute copy of an Apple shop. It will also need to turn its attention to the rest of the world outside Europe and the United States.  One person who has worked with the firm in China said there were stores there which were so similar, the store staff actually thought they were working for Apple.

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