Procedural History
The procedural history of this ruling takes us back across
the pond. Apple has had a U.S.
trademark for
its store design since January, 2013. Looking to extend that protection to
Europe, Apple filed for international trademark protection with the DPMA. The
DPMA denied Apple’s extension of its international trademark and Apple appealed.
The case was escalated by the German Federal Patent Court, which has the final
say on EU law.
German Federal Patent Court Grants Apple’s Store Design Trademark
The court laid out the three requirements for trademark
protection: (1) the mark must be a sign; (2) that sign must be capable of
graphic representation; and (3) the sign must be capable of distinguishing the
‘goods’ or ‘services’ of one undertaking from those of other undertakings. See Judgment in Apple Inc.
v Deutsches Patent- und Markenamt, C-421/13, paragraph 17 [10 July 2014]. Concluding that Apple’s
store design trademark met all three requirements, the court stated:
[T]he 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 . . . provided that the sign
is capable of distinguishing the services of the applicant for registration
from those of other undertakings[.]
Id. at paragraph
27.
Protected Elements
Many of the design elements both on the outside of the store
and the inside of the store are protected under Apple’s mark, including the
all-glass exterior of the store design, the shape of the building (i.e., a cube
or a cylinder), the interior layout of the shelves and tables, its recessed
lighting, and even the colors steel grey, light brown and black.
See Registration No. 85036990 and Registration No. 85036986.
Keeping Tabs on Apple
Keep track of the Apple’s ever-growing docket of IP cases
with Docket Alarm’s email alerts. Use Docket Alarm’s Federal Court Case Alert
Tool to get all new case alerts. Type “Apple” into the search bar and select Trademark
as part of the nature of suit to
view a comprehensive list of Apple dockets. Select
the “Get New Lawsuit Alerts!” button to receive an alert every time there is a
new docket or update.
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