Brand names and logos are not the only things a trademark protects. Cadbury trademarked the shade of purple associated with the brand, and Coca-Cola trademarked its iconic Coca-Cola bottle. Meanwhile, Apple Inc., known for its revolutionary gadgets and out of the box ideas, has gone a step further, by successfully securing trademarks for its retail store design after a three-year-long battle. The news has attracted a lot of attention despite not being the first time a shop interior was granted a trademark.

The design and utility of Apple’s products, which always amaze people, are probably one of the most important factors in its success and competitive advantage. The brand wants to establish itself as being different from retail stores of other tech companies. In addition, the company wants to keep out copycats who profit from counterfeit Apple products and have set up fake Apple retail environments with glass minimal displays and all the other things that you’d find in an Apple store.

Their application for registration of store design as a trademark was rejected twice by the U.S. Patent and Trademark Office, on the ground that store design was not “inherently distinctive”. The means of protection for store layouts are primarily dealt with under the law of Trade dress in the US [1]. Under the U.S. law, protection for a trade dress is available, if the feature for which trade dress protection is claimed bears the same source-identifying function as a trademark in terms of design and shape of the materials in which a product is packaged, the product configuration, decor or environment in which services are provided, etc.  Apple submitted materials and drawings, relied on the substantial business activity generated by their stores, promotional events that were tied to Apple stores, photographs of the stores on their website, and numerous unsolicited media articles about the store design and ultimately gained registration for its rectangular store layouts as a trademark.

The German Trademarks Office had also refused their application for registration of store design. Apple appealed against the DPMA’s (Das Deutsche Patent- und Markenamt) decision before the German Federal Patent Court, which sought clarification from the Court of Justice of the European Union (CJEU).  The CJEU firstly noted that to be capable of constituting a trademark for Article 2 of the Directive, the subject matter of an application for trademark registration must satisfy three conditions, namely, it must (1) be a sign, (2) be capable of graphic representation and (3) be capable of distinguishing the “goods” or “services” of one undertaking from those of other undertakings.

The CJEU stated that it was “absolutely plain from the wording of Article 2 of Directive that designs are among the categories of signs capable of graphic representation”. It was also pointed out that “the representation, by a design, of the layout of a retail store is capable of distinguishing the products or services of one undertaking from those of other undertakings…….”

Protection of store layouts or venues of business that have sophisticated style and add distinctiveness to their brand, enables brand owners to stand out and make a mark among consumers, as they can immediately identify store branding and relate particular shopping experiences with specific stores and products. Therefore, as branding becomes increasingly important, the expansion of legal protection over unique in-shop experiences is also important to protect store ambiance or shopping environment from being misappropriated by others.

Differentiated stores are advantageous in the marketplace. It is easy for customers to identify store branding and associate specific shopping experiences with specific stores Under current law, it is difficult to protect the distinctive features of a shop layout without resorting to expensive litigation. Therefore, Businesses will rely on printing their trademarked brand names or logos on various surfaces throughout the store until it becomes easier to prevent others from copying the interiors of retail stores.

By

Swathy Kannan

[1] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e835.html