Should the registration of trade marks for store layouts be welcomed in the European Union?

Should the registration of trade marks for store layouts be welcomed in the European Union? Abstract The author Cheuk Fai James Kwong holds an LLB (University of Southampton) and PCLL (City University of Hong Kong). This article Advancement in modern marketing practices and technology has led to the extension of trade mark protection to include less conventional marks such as colours, scents, sounds and shapes. The recent decision of the Court of Justice of the European Union (CJEU) in Apple Inc v Deutsches Patent- und Markenamt (DPMA) has gone even further to extend the scope of trade mark protection to cover store layouts. In offering an additional layer of protection for traders, unconventional trade marks stretch the meaning of what constitutes a ‘mark’ and challenge the boundaries of trade mark protection. This article seeks to address the effects and difficulties of extending trade mark protection to store layouts in the EU by focusing on issues of registrability and enforcement. This article concludes that, despite potential difficulties and shortcomings, registration of trade marks for store layout should be welcomed in the EU. 1. Introduction As Tushnet puts it, modern society is a time of ‘persistent advertising clutter’.1 The number of brands and advertisements increases rapidly. Attracting consumers’ attention is therefore a crucial factor to influence sales behaviour.2 Due to the increase of competition, traditional words, marks and two-dimensional logos may no longer be sufficient to capture the attention of consumers in light of the advancement of innovative marketing techniques and electronic commerce.3 This has led to the introduction of a range of less conventional trade marks. The CJEU decision in Apple Inc v Deutsches Patent- und Markenamt (DPMA)4 has even extended the scope of trade mark registration to also include store layout. While this case is the first in the EU to illustrate the possibility of registering a store layout, it has been the subject of trade dress protection (a sub-category of trade mark protection), whether registered or unregistered, together with design patent and copyrights, in the USA as early as 1895.5 Under the US system, traders are effectively warranted with exclusive rights on the use of store layouts. From a marketing perspective, the particular layout of a store may be crucial for a company’s success. With regard to the interior design of retail stores, it has been long established that ‘the philosophy of creating unified décor and tone throughout a retail environment could be an important sales tool’.6 Buyers may choose vendors due to their store layout atmosphere because ‘atmosphere may become the chief form of competition’.7 In this regard, the layout of a store would operate as a source indicator that facilitates consumers to identify the origin of the goods and services offered. This view is supported by behavioural economists who agree with the saying that the exterior perception8 of a product, a brand or advertisement is the major element in capturing a consumer’s attention. Cognitive science provides an explanation to this phenomenon: traditional trade marks require more eye-fixations9 to be comprehended, and therefore are slower in capturing consumers’ attention.10 Non-textual perceptions, for example shapes and colours, which rely on automatic fast and effortless pre-attentive processes11 can capture consumers’ attention quickly. Once the consumer’s attention is captured, the sensory perception remains important to influence sales behaviour because a consumers’ choice is usually based on memory and emotional associations, rather than rational cognitive processes.12 Nowadays, apart from the design of packaging, many retailers invest substantially in developing stores,13 an example being the large design-led stores of multinational companies like Apple and Microsoft. Flagship stores are designed to create a unique retail experience. For instance, all Apple stores features a designated area called the ‘Genius Bar’ with facilities where customers can receive technical advice or set-up service and repair for their products. Another example is restaurant layouts, which are designed to give customers a specific festive atmosphere or an emotional dining environment.14 Owing to the fact that traders place a lot of emphasis on store design and scientific evidence suggesting that store layout does indeed stimulate consumers’ memory and enrich shopping experience, it has become increasingly important to expand trade mark protection to store layout as well. Although Apple Inc v DPMA confirmed the possibility of registering a store layout, the decision has sparked a vivid discussion in that the CJEU is of the view that a representation, by a design alone, without any indications as to the size or the proportions of the layout of the store, may be sufficient to qualify for registration.15 This has led to concerns over the scope of protection and enforcement of a store layout trade mark, and whether it should be granted registration. This article takes the opportunity to review the registrability of store layouts and the potential problems faced by traders who wish to have their store layouts registered. To set the scene, the author briefly recaps the facts and decision of Apple Inc v DMPA. 2. Apple Inc v DPMA The decision in Apple Inc v DPMA is the first to acknowledge that a retail store design is capable of functioning as a trade mark. The case originated as part of Apple’s plan to extend its US store layout trade mark internationally, which is believed to have been prompted by the large number of fake Apple stores around the globe, especially in countries such as China,16 Croatia17 and Vietnam.18 The latter issue was widely reported by the press when the blog ‘BirdAbroad’ revealed how far owners of fake Apple stores in Kunming, China,19 had gone to imitate the decoration and store layout of a real Apple store.20 Other than the poor paint job, the construction of the staircase in the store21 and the ‘Apple Store’ tag beneath the logo which is not found in real Apple stores, the fake stores look identical to a real store. The blog also revealed that many of the staff were convinced that they were working for Apple. The Apple case was a reference for a preliminary ruling from the German Bundespatentgericht (German Federal Patent Court). It concerned Apple's application to register a three-dimensional trade mark consisting of a multi-coloured representation of its flagship store (as seen below). View largeDownload slide Multi-coloured representation of Apple’s flagship store View largeDownload slide Multi-coloured representation of Apple’s flagship store The application was initially refused by the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) on the ground that the depiction of space devoted to the sale of the undertaking’s goods was nothing other than the representation of an essential aspect of that undertaking’s business and that consumers would not see it as an indication of the commercial origin of the undertaking’s products. Apple appealed the decision before the German Federal Patent Court. The questions that the national court raised as reformulated by the CJEU were, inter alia, whether the representation of the layout of a retail store, by a design alone, without any indication of size or proportions, may be registered as a trade mark for services aimed at inducing the consumer to purchase the products of the applicant and, if so, whether such a ‘presentation of the establishment in which a service is provided’ may be treated in the same way as ‘packaging’. The CJEU held in the affirmative stating that, under the Trade Mark Directive,22 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 … provided that the sign is capable of distinguishing the services of the applicant from the registration from those of other undertakings; and … is not precluded by any of the grounds for refusal.23 The subject matter of the application must satisfy three conditions in accordance with the Trade Mark Directive. It must: (1) constitute a sign; (2) be capable of graphic representation and (3) be capable of distinguishing the ‘goods’ or ‘services’ of one undertaking from those of another undertaking.24 The court emphasized, however, that the fact that a sign is generally capable of constituting a trade mark does not imply that the sign necessarily possesses a distinctive character within the meaning of the Directive. This character has to be assessed by reference to: (1) the goods and services in question and (2) the perception of the relevant public.25 3. Registrability of store layouts In stating that a store layout can be registered as a trade mark provided that it is a sign which can be graphically represented and is distinctive, the decision does not raise any new principles of law. Instead it illustrates the CJEU’s willingness to recognize new unconventional signs within the existing legal framework that denote trade origin as trade mark. 3.1. Distinctiveness It is comparatively more difficult to register a less conventional mark, mainly due to its low distinctive character. This is demonstrated by the Kiko case.26 The Opposition Division of the European Union Intellectual Property Office (EUIPO) recently upheld the rejection of Kiko’s application to register the layout of its cosmetics retail stores as an EU trade mark due to lack of distinctiveness. Referring to the principles set forth by the CJEU in Apple Inc v DMPA, the EUIPO examined every component of the store layout before undertaking a global assessment of the sign’s distinctiveness. The EUIPO found that the lines that delimited the roof, the floor and the walls of the stores, all the rectangular and circular forms and the shape of the tables were all commonly found features which are not capable of being distinctive. Kiko also failed to prove acquired distinctiveness, one of the reasons being that the design of the layout was not consistently followed in all the stores. This case demonstrates that, although the CJEU held that a store layout can be potentially registered as a trade mark, the relevant applicant has to meet a relatively high threshold in order to successfully register the sign. This is mainly due to the difficulty of proving distinctiveness. This is made even more difficult where single components of the layout have to be examined before undertaking a global assessment. Applicants not only have to ensure that their layout is unique, but they also need to make sure every aspects of the layout are distinctive when assessed separately. As a general principle, a trade mark will only be granted where it is shown that the average consumer can associate the design to a particular source27. Registration would be struck down if it could be found that the layout of the store is a usual way of presenting the service provided and that consumer would pay little attention to the layout. Applying these rules to retail stores services featuring electronic appliances, such as Apple and Microsoft, it might be difficult to prove that the store layout is distinctive as there are so many similarities between different layouts in the relevant field.28 It would be difficult to prove that the layout of the store is capable of distinguishing the products of one undertaking from those of another. It would also be problematic to prove that consumers would identify the services provided by the store just by looking at the store layout. Instead of associating the store layout with the service of selling and repair of electronic products, consumers might associate the store layout with the electronic products produced by the traders. On the contrary, if a restaurant sought to register its store layout which contains inherently distinctive decorations to promote a specific dining environment, as in Two Pesos v Taco Cabana,29 where the decorations were to mimic a Mexican atmosphere, the layout would be distinctive enough to be registered under EU law. Ordinary restaurant environments, as in Happy Pizza Franchise, LLC v Papa’s Pizza Inc.,30 where the plaintiff’s trade dress consisted of a big menu, neon signage, steel shelving and stacked pizza boxes and so on, is unlikely to be regarded as sufficiently distinctive. A store layout may also be interpreted as a shape mark because a store layout itself can be considered as a shape, or an arrangement of different shapes. A mark is only distinctive if it can be established that the shape is a substantial deviation from the usual usage in a particular field.31 It must ‘significantly depart from the norm or customs of the sector’, such that the relevant consumers would notice it and would think of the shape as indicative of the trade source.32 Prior to the judgment in the Apple case, few court decisions dealt with service marks similar to store layout in the EU. In general, it is difficult for an applicant to bring in evidence to prove that the shape is inherently distinctive because the general approach is that an average consumer would not view a shape as indicative of the trade source. In Smart Tower,33 which concerns the shape of a building exterior, the Board of Appeal of OHIM (as it then was) noted that the relevant public usually recognizes the affiliation of a building to a particular company through other design elements rather than the design of the building itself. Furthermore, since building designs are usually perceived from a distance, the alleged connection between the building’s exterior and shape and the service provided is less obvious. Arguably, a different interpretation would apply in relation to store layout. This is because, unlike an exterior design, consumers would perceive an interior design closely and that consumer behaviour would be directly affected by the layout, as proven by behavioural science.34 In this case, if there is a substantial deviation from the norm in the particular industry, the store layout would likely be distinctive. This appeared to be the approach taken by the German Federal Patent Court, which considered the Apple store design to be distinctive because there are a significant number of unique features that deviated substantially from the usual interior design of retail stores, such as the lack of commonly used storage spaces and a recognizable cashier area. Arguably, notwithstanding Apple’s stores’ minimalist design, the design is sufficiently distinctive. It is not a prerequisite that the visual appearance of an object has to be complicated to be distinctive. In fact, it may be the clean and elegant nature of Apple’s store layout design that makes it distinctive in nature. However, contrary to the view of the Federal Patent Court, the German Patent and Trade Mark Office held that consumers would not perceive the Apple store design as an indication of source of the services provided. The representation of the Apple store was found not to be substantially distinctive compared to other retail stores offering electronic consumer products. Instead, the trade source would be perceived by means a word mark or a logo. The relevant public would view the store layout as an indication of Apple’s high quality and price category. From the inconsistencies in judicial approach, it reflected that the area of law on inherent distinctiveness is not only highly fact-specific, but would also depend heavily on the interpretation adopted by different authorities. Another issue is that the focus of the CJEU seems to be based on textual components of a trade mark. This is reflected by the restrictive approach adopted. For instance, the CJEU had repeatedly made the assumption that relevant consumers would not regard a shape as being indicative of a particular commercial origin.35 This assumption is not well-supported by empirical evidence or behavioural science.36 Evidence shows that shape marks can function even quicker and better than other more conventional signs as a means to attract a consumer’s attention and differentiate products and services.37 Another example would be the CJEU’s assumption that consumers are unlikely to think about the origin of goods based on their colour.38 Again, this is not supported by cognitive science as colour marks do constitute a strong and pervasive means of identification for consumers as they are linguistically neutral.39 It is the writer’s view that the CJEU should not neglect scientific evidence. This is because the assumptions made without scientific basis would be unconvincing, making it unfair to unconventional mark holders whose mark is actually an effective and useful means for consumers to identify the source of the product or service. Practically speaking, however, it would be advantageous to maintain a higher threshold for registration of unconventional trade marks as such marks are considerably more difficult to enforce than conventional ones. Applicants might be able to overcome the lack of inherent distinctiveness by showing acquired distinctiveness by establishing a high degree of reputation among the relevant public through use. To do so, the applicants must establish that a significant proportion of the relevant public associates the mark with the goods or services from that trader.40 To prove the necessary degree of market recognition, all relevant factors have to be taken into consideration, including the market share held by the mark, the intensity of use and the geographical range and so on.41 It would be considerably easier for traders with reputation to satisfy this requirement. 3.2. Scope of protection It would be difficult for competitors to determine the protection offered by a store layout trade mark, especially with regard to the way in which the CJEU dealt with the issue in the Apple case. The CJEU confirmed that indications of size or proportions of the layout of retail store were not relevant to the registration of a trade mark. The graphic representation that Apple submitted would be sufficient because it ‘depicts the layout of a retail store by means of an integral collection of lines, curves and shapes … provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings.’42 However, this decision may be problematic for competitors to determine the scope of protection because such vague or simple graphic representation, similar to that provided by Apple, may not provide sufficient clarity and indications for competitors in the field. Furthermore, some commentators argued that the CJEU decision in the Apple case is not in line with the decision in Sieckmann, which requires a graphic representation to be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective.’43 As no dimensions or any additional descriptions were needed for registration, the graphic representation of Apple store is neither clear nor precise. The post-Apple approach may be contrary to the approach adopted by the United States Patent and Trademark Office (USPTO), where the applicant must provide a clear and precise description of the trade mark that is sufficient in defining the elements and the scope of the store design sought to be protected.44 The USPTO initially refused Apple’s retail store registration on the basis that the graphic representation is completely unclear with regard to what the applied mark would consist of.45 The USPTO only accepted Apple’s application after Apple resubmitted a much more detailed description of the mark, describing every aspect of the store as follows: The store features a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store’s ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a long table with stools located at the back of the store, set below video screens flush mounted on the back wall. The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items are considered to be part of the overall mark.46 From a competitor’s standpoint, the Sieckmann criteria should be followed more closely by requiring applicants to present a more precise graphic representation with clearer reference to the size, proportions and dimensions, allowing competitors to understand clearly what the mark entails and help to prevent unfair competition within the same industry. From a trader’s standpoint, a certain degree of uncertainty in the graphic representation would be beneficial as protection offered by the registration would then be more flexible. The removal of the graphic representation in the new EU Trade Mark Package will likely have little effect on store layout registration. This is because, in practice, graphic representation would still be necessary to represent the store layout clearly and precisely, given that a store layout is highly dependent on designs and illustrations. Furthermore, it seems that the threshold for a sufficient representation is not lowered under the new requirement because the Sieckmann criteria are referred to in the new Trade Mark Directive.47 Although the way in which the new provisions would be applied in practice remains unknown at present, taking current case law into consideration, it is unlikely that the simple graphic representation submitted by Apple would be sufficient. 3.3. Potential anti-competitive effects As with other unconventional trade marks, there is concern that the registration of store layout would create potential anti-competitive effect among traders of the same industry.48 Excessive protection of store layout could reduce competition substantially. This problem could be resolved by raising the bar for trade mark protection, for instance, with regard to distinctiveness. However, if the protection granted was too minimal, traders’ incentive for creation might be substantially reduced and the public would be left with few creations to choose from in the market. 4. Enforcement of store layout trade marks Registration is one thing and enforcement is another. After successful trade mark registration, difficulties would arise in enforcement, for example in relation to the degree of similarity between the registered layout and the copied layout by an imitator. It is unclear how the trade mark might affect Apple’s competitors (such as Samsung and Microsoft) whose store layouts are somewhat similar to Apple’s.49 In addition, there would still be queries on the scope of protection relating to the mark.50 As no size or dimensions are provided in the graphic representation in the Apple case, the judge in an infringement action would have to evaluate the differences in the dimensions of store layouts of the alleged infringer in order to decide whether they are within the scope of protection.51 It would therefore be difficult for competitors to assess likely risks of infringement. Furthermore, store layouts are usually used together with other more conventional trade marks. For example, the trade name of the business is usually placed in an eye-catching position of the store.52 Thus, it is likely that both the word logo and the shop design would be considered as ‘a composite sign’.53 In this situation, confusion as to the trade source might be unlikely. Traders would have to provide strong evidence showing that the store layout itself can be used to identify the trade source, regardless of other conventional marks. Even if the store layout was clearly defined, it would be relevant for traders to consider the effects of the brand names in the sign. This is because if a link can be demonstrated between the layout and the brand (for example, by means of advertising), the brand name would clear any possible confusion on the trade source.54 5. Concluding remarks Nowadays the majority of the most successful retail companies invests substantially in advertising and brand-building with the aim of promoting their values and building a strong and loyal consumer base. The CJEU decision in the Apple case could prompt such already well-established retailers and franchisors to adopt more standardized store layouts in order to maintain a distinctive identity on the market. The CJEU decision could also encourage small, emerging businesses to increasingly adopt an innovative and novel store layout. However, the decision also demonstrates clearly that the store layout design must be substantially different from the norm in order to fall within the scope of protection. It is expected that only very peculiar layouts would meet the required threshold. The result would be beneficial to the public as more varieties of products and services would be available on the market. There are numerous hurdles in the enforcement of store layout trade marks. At the moment protection of unconventional trade marks remains in fact both uncertain and expensive. Arguably, the potential availability of store layout trade marks protection might favour large organizations at the expense of small set-ups and new entrants to the market, irrespective of which business is the source of the creation. Despite this, there are benefits in enabling registrations for limited sets of factual circumstances. Extending trade mark protection to store layouts would provide an additional and stronger level of protection. The removal of the graphic representation requirement in the EU Trade Mark Package could also facilitate the registration of store layouts and other unconventional trade marks. All this is in line with the European Commission’s objective to modernize the existing system. Overall, registration of trade marks for store layout should be welcomed in the EU, notwithstanding the potential issues in registration and enforcement. As the laws in unconventional trade marks would develop mainly through litigation between traders, competitors and alleged infringers—rather than through legislation—it can be foreseen that future cases could serve as potential guidelines for traders in this fact-specific and judge-made area of law. The author wishes to acknowledge Dr Eleonora Rosati, Associate Professor in Intellectual Property Law, University of Southampton, for her unlimited support and invaluable advice. Appendix I – Figures and Images Figure 1. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 1. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 2. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 2. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 3. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 3. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 4. View largeDownload slide Image of the staircase in a fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 4. View largeDownload slide Image of the staircase in a fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Footnotes 1 R. Tushnet, ‘Gone in sixty milliseconds: trade mark law and cognitive science’ (2008) 86 Tex Law Rev 507, para 513. 2 D. Schloss, ‘Special problems in registration of non-traditional trade marks’ (1999) Intellectual Property Strategist. 3 Tushnet (n1), 513; R. Pieters and M. Wedel, ‘Attention capture and transfer in advertising: brand, pictorial and text-size effects’ (2004) 68 J.Mark 36, para. 37. 4 Judgment in Apple Inc v Deutsches Patent-und Markenamt, C-421/13, EU:C:2014:2070. 5 N. Hohn-Hein, ‘Registering store design as a trademark in the United States and Germany: a comparative analysis’ (2015) 105(6) TMR 1295, para. 1299. See, for example: Abercrombie & Fitch Stores v Hunting World Inc 1976; Cohen 1986; Two Pesos v Taco Cabana 1992. 6 K. Philip, ‘Atmosphere as a Marketing Tool’ (1973) 49(4) J Retailing 48, para. 50. 7 Hohn-Hein (n5), paras 1295–6. 8 Exterior perception refers to the manner in which the visual design captures one’s attention. 9 Eye-fixation refers to the maintaining of the visual gaze on a single location. 10 Pieters and Wedel (n3), paras 36–9. 11 Pre-attentive process refers to how an individual processes sensory information subconsciously without attracting attention from conscious mind. 12 B. Hall, ‘A new model for measuring advertising effectiveness’ (2002) 42 J Advert Res 23. 13 See for example S.W. Kopp and J. Langenderfer J, ‘Protecting appearance and atmospherics trade dress as a component of retail strategy’ (2014) 33 J PP&M 34; T. Farkas, ‘Trademark Protection for store designs: one trademark a day keeps Apple’s competitors away’ (2014) 18 Revista la Propiedad Inmaterial 323. 14 Euromoney Institutional Investor PLC, ‘What business owners can learn from Apple’s store trade mark’ (2013) 228 MIP 87. 15 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) para. 17. 16 Reuters, ‘How fake Apple stores in China are cashing in on the new iPhone’ (The Telegraph, 24 September 2015), http://www.telegraph.co.uk/finance/china-business/11887270/How-fake-Apple-Stores-in-China-are-cashing-in-on-the-new-iPhone.html. 17 Nycmidwife, ‘Over to you guys: fakery around China and the World’ (BirdAbroad, 23 July 2011), https://birdabroad.wordpress.com/2011/07/23/over-to-you-guys-fakery-around-china-and-the-world. 18 Nycmidwife, ‘Now it’s your turn: send me you fake Apple pics!’ (BirdAbroad, 21 July 2011), https://birdabroad.wordpress.com/2011/07/21/now-its-your-turn-send-me-your-fake-apple-pics. 19 See Figures 1–3. 20 BBC Technology, ‘Chinese authorities find 22 fake Apple stores’ (BBC, 12 August 2011), http://www.bbc.co.uk/news/technology-14503724; T. Thornhill, ‘The fake Apple store in China so convincing that even its staff are fooled’ (Daily Mail, 22 July 2011), http://www.dailymail.co.uk/news/article-2016885/Fake-Apple-store-China-convincing-staff-fooled.html; Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July, 2011), https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/. 21 See Figure 4. 22 Directive 2008/95/EC of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks [2008] OJ L299/25, Article 2. 23 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) para. 8. 24 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) para. 17. 25 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) paras 21–2. 26 EUIPO, First Board of Appeal, R1135/2015-1, 03/29/2016. On this judgment, see also M. Giannino, ‘KIKO: the EU IPO rejects an EU trade mark application for the layout of cosmetics retail stores’ (2016) 11(9) JIPLP 648. 27 EUIPO, First Board of Appeal, R1135/2015-1, 03/29/2016. 28 F. Manjoo, ‘Welcome to the Microsoft Store’ (Slate, 25 April 2012), http://www.slate.com/articles/technology/technology/2012/04/microsoft_store_it_s_a_blatant_rip_off_of_the_apple_store_and_it_just_might_save_the_company_.html (accessed 20 May 2017); S. Fiegerman, ‘8 companies that have deliberately copied the Apple store’ (Business Insider, 16 July 2012), http://www.businessinsider.com/these-companies-have-deliberately-copied-the-apple-store-2012-7?IR=T (accessed 20 May 2017). 29 Two Pesos v Taco Cabana (1992) 505 US 763. 30 Happy’s Pizza Franchise, LLC v Papa’s Pizza Inc., 2013 WL 308728 (ED Mich Jan 25, 2013). 31 Judgment in Henkel KGaA v OHIM (Trade Marks and Designs) (OHIM), C-218/01, EU:C:2004:258, para. 39. 32 Judgment in Henkel KGaA v OHIM (Trade Marks and Designs) (OHIM) (n30) para. 49. 33 Smart Tower, C-R 1/2003-4 (Eur Comm. Trade Marks Office, Boards of Appeal). 34 J. Baker, D. Grewal and M. Levy, ‘An experimental approach to making retail store environment decisions’ (1998) 68 Journal of Retailing 445. 35 Judgment in Eurocermex SA v OHIM, T-399/02 (n22) para. 23; Judgment in Linde AG, Winward Industries, Radio Watch Co. Ltd, Joined Cases C-53/01-55/01, EU:C: 2003:260, para 48; Judgment in Libertel Groep BV v Benelux-Merkenbureau, C-104/01, EU:C:2003:244, para 65. 36 Pieters and Wedel (n3), paras 37–9. 37 Ibid. 38 Judgment in Libertel Groep BV v Benelux-Merkenbureau (n29), para. 65. 39 S. Sandri and S. Rizzo, Non-Conventional Trade Marks and Community Law (1st edn, Marques, 2003), p. 70. 40 Judgment in Windsurfing Chiemsee, joined cases C-108/97 and C-109/97, EC:C:1999:230, para. 52; judgment in Koninklijke Electronic NV v Remington Consumer Products Ltd, C-299/99, EU:C:2002:377, para. 65. 41 Judgment in Windsurfing Chiemsee, joined cases C-108/97 and C-109/97, EC:C:1999:230, para 47; judgment in Oberbank AG, Banco Santander SA, Santander Consumer Bank AG v Deutscher Sparkassen- und Giroverband eV, joined cases C-217/13 and C-218/12, EU:C:2014:2012, para. 41. 42 Apple Inc v Deutsches Patent-und Markenamt (n4), paras 16–17. 43 G. Glas and N. Vanavermaete, ‘What the CJEU’s ruling in Apple means for retailers’ (2014) 242 Managing Intellectual Property, 34, 35. 44 T. McCarthy, McCarthy on Trademarks and Unfair Competition (4th edn, Thomas Reuters) 8.3. 45 Glas and Vanavermaete (n42), 35. 46 The USPTO Registry, Registration Number 4,277,914 (Registered 22 January 2013). 47 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, OJ L 336, 1–26, Recital 13. 48 Farkas (n13), 323, 344. 49 C. Foresman, ‘Apple granted trademark protections for the interior of the Apple store’ (Ars Technica, 30 January 2013), http://arstechnica.com/apple/2013/01/apple-granted-trademark- protections-for-the-interior-of-the-apple-store/ (accessed 21 May 2017). 50 BP Amoco Plc v John Kelly Ltd [2002] FSR 5, CA (NI). 51 J. Blum and A. Cullen, ‘The Apple store and unconventional trade marks: how easy are they to enforce?’ (2014) 9 JIPLP 1008, 1009. 52 Ibid, 1009. 53 Ibid, 1010. 54 See, for example, judgment in Specsavers International Healthcare and others, C-252/12, EU:C:2013:497, paras 42–50. © The Author(s) 2017. Published by Oxford University Press. All rights reserved. http://www.deepdyve.com/assets/images/DeepDyve-Logo-lg.png Journal of Intellectual Property Law & Practice Oxford University Press

Should the registration of trade marks for store layouts be welcomed in the European Union?

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Abstract The author Cheuk Fai James Kwong holds an LLB (University of Southampton) and PCLL (City University of Hong Kong). This article Advancement in modern marketing practices and technology has led to the extension of trade mark protection to include less conventional marks such as colours, scents, sounds and shapes. The recent decision of the Court of Justice of the European Union (CJEU) in Apple Inc v Deutsches Patent- und Markenamt (DPMA) has gone even further to extend the scope of trade mark protection to cover store layouts. In offering an additional layer of protection for traders, unconventional trade marks stretch the meaning of what constitutes a ‘mark’ and challenge the boundaries of trade mark protection. This article seeks to address the effects and difficulties of extending trade mark protection to store layouts in the EU by focusing on issues of registrability and enforcement. This article concludes that, despite potential difficulties and shortcomings, registration of trade marks for store layout should be welcomed in the EU. 1. Introduction As Tushnet puts it, modern society is a time of ‘persistent advertising clutter’.1 The number of brands and advertisements increases rapidly. Attracting consumers’ attention is therefore a crucial factor to influence sales behaviour.2 Due to the increase of competition, traditional words, marks and two-dimensional logos may no longer be sufficient to capture the attention of consumers in light of the advancement of innovative marketing techniques and electronic commerce.3 This has led to the introduction of a range of less conventional trade marks. The CJEU decision in Apple Inc v Deutsches Patent- und Markenamt (DPMA)4 has even extended the scope of trade mark registration to also include store layout. While this case is the first in the EU to illustrate the possibility of registering a store layout, it has been the subject of trade dress protection (a sub-category of trade mark protection), whether registered or unregistered, together with design patent and copyrights, in the USA as early as 1895.5 Under the US system, traders are effectively warranted with exclusive rights on the use of store layouts. From a marketing perspective, the particular layout of a store may be crucial for a company’s success. With regard to the interior design of retail stores, it has been long established that ‘the philosophy of creating unified décor and tone throughout a retail environment could be an important sales tool’.6 Buyers may choose vendors due to their store layout atmosphere because ‘atmosphere may become the chief form of competition’.7 In this regard, the layout of a store would operate as a source indicator that facilitates consumers to identify the origin of the goods and services offered. This view is supported by behavioural economists who agree with the saying that the exterior perception8 of a product, a brand or advertisement is the major element in capturing a consumer’s attention. Cognitive science provides an explanation to this phenomenon: traditional trade marks require more eye-fixations9 to be comprehended, and therefore are slower in capturing consumers’ attention.10 Non-textual perceptions, for example shapes and colours, which rely on automatic fast and effortless pre-attentive processes11 can capture consumers’ attention quickly. Once the consumer’s attention is captured, the sensory perception remains important to influence sales behaviour because a consumers’ choice is usually based on memory and emotional associations, rather than rational cognitive processes.12 Nowadays, apart from the design of packaging, many retailers invest substantially in developing stores,13 an example being the large design-led stores of multinational companies like Apple and Microsoft. Flagship stores are designed to create a unique retail experience. For instance, all Apple stores features a designated area called the ‘Genius Bar’ with facilities where customers can receive technical advice or set-up service and repair for their products. Another example is restaurant layouts, which are designed to give customers a specific festive atmosphere or an emotional dining environment.14 Owing to the fact that traders place a lot of emphasis on store design and scientific evidence suggesting that store layout does indeed stimulate consumers’ memory and enrich shopping experience, it has become increasingly important to expand trade mark protection to store layout as well. Although Apple Inc v DPMA confirmed the possibility of registering a store layout, the decision has sparked a vivid discussion in that the CJEU is of the view that a representation, by a design alone, without any indications as to the size or the proportions of the layout of the store, may be sufficient to qualify for registration.15 This has led to concerns over the scope of protection and enforcement of a store layout trade mark, and whether it should be granted registration. This article takes the opportunity to review the registrability of store layouts and the potential problems faced by traders who wish to have their store layouts registered. To set the scene, the author briefly recaps the facts and decision of Apple Inc v DMPA. 2. Apple Inc v DPMA The decision in Apple Inc v DPMA is the first to acknowledge that a retail store design is capable of functioning as a trade mark. The case originated as part of Apple’s plan to extend its US store layout trade mark internationally, which is believed to have been prompted by the large number of fake Apple stores around the globe, especially in countries such as China,16 Croatia17 and Vietnam.18 The latter issue was widely reported by the press when the blog ‘BirdAbroad’ revealed how far owners of fake Apple stores in Kunming, China,19 had gone to imitate the decoration and store layout of a real Apple store.20 Other than the poor paint job, the construction of the staircase in the store21 and the ‘Apple Store’ tag beneath the logo which is not found in real Apple stores, the fake stores look identical to a real store. The blog also revealed that many of the staff were convinced that they were working for Apple. The Apple case was a reference for a preliminary ruling from the German Bundespatentgericht (German Federal Patent Court). It concerned Apple's application to register a three-dimensional trade mark consisting of a multi-coloured representation of its flagship store (as seen below). View largeDownload slide Multi-coloured representation of Apple’s flagship store View largeDownload slide Multi-coloured representation of Apple’s flagship store The application was initially refused by the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) on the ground that the depiction of space devoted to the sale of the undertaking’s goods was nothing other than the representation of an essential aspect of that undertaking’s business and that consumers would not see it as an indication of the commercial origin of the undertaking’s products. Apple appealed the decision before the German Federal Patent Court. The questions that the national court raised as reformulated by the CJEU were, inter alia, whether the representation of the layout of a retail store, by a design alone, without any indication of size or proportions, may be registered as a trade mark for services aimed at inducing the consumer to purchase the products of the applicant and, if so, whether such a ‘presentation of the establishment in which a service is provided’ may be treated in the same way as ‘packaging’. The CJEU held in the affirmative stating that, under the Trade Mark Directive,22 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 … provided that the sign is capable of distinguishing the services of the applicant from the registration from those of other undertakings; and … is not precluded by any of the grounds for refusal.23 The subject matter of the application must satisfy three conditions in accordance with the Trade Mark Directive. It must: (1) constitute a sign; (2) be capable of graphic representation and (3) be capable of distinguishing the ‘goods’ or ‘services’ of one undertaking from those of another undertaking.24 The court emphasized, however, that the fact that a sign is generally capable of constituting a trade mark does not imply that the sign necessarily possesses a distinctive character within the meaning of the Directive. This character has to be assessed by reference to: (1) the goods and services in question and (2) the perception of the relevant public.25 3. Registrability of store layouts In stating that a store layout can be registered as a trade mark provided that it is a sign which can be graphically represented and is distinctive, the decision does not raise any new principles of law. Instead it illustrates the CJEU’s willingness to recognize new unconventional signs within the existing legal framework that denote trade origin as trade mark. 3.1. Distinctiveness It is comparatively more difficult to register a less conventional mark, mainly due to its low distinctive character. This is demonstrated by the Kiko case.26 The Opposition Division of the European Union Intellectual Property Office (EUIPO) recently upheld the rejection of Kiko’s application to register the layout of its cosmetics retail stores as an EU trade mark due to lack of distinctiveness. Referring to the principles set forth by the CJEU in Apple Inc v DMPA, the EUIPO examined every component of the store layout before undertaking a global assessment of the sign’s distinctiveness. The EUIPO found that the lines that delimited the roof, the floor and the walls of the stores, all the rectangular and circular forms and the shape of the tables were all commonly found features which are not capable of being distinctive. Kiko also failed to prove acquired distinctiveness, one of the reasons being that the design of the layout was not consistently followed in all the stores. This case demonstrates that, although the CJEU held that a store layout can be potentially registered as a trade mark, the relevant applicant has to meet a relatively high threshold in order to successfully register the sign. This is mainly due to the difficulty of proving distinctiveness. This is made even more difficult where single components of the layout have to be examined before undertaking a global assessment. Applicants not only have to ensure that their layout is unique, but they also need to make sure every aspects of the layout are distinctive when assessed separately. As a general principle, a trade mark will only be granted where it is shown that the average consumer can associate the design to a particular source27. Registration would be struck down if it could be found that the layout of the store is a usual way of presenting the service provided and that consumer would pay little attention to the layout. Applying these rules to retail stores services featuring electronic appliances, such as Apple and Microsoft, it might be difficult to prove that the store layout is distinctive as there are so many similarities between different layouts in the relevant field.28 It would be difficult to prove that the layout of the store is capable of distinguishing the products of one undertaking from those of another. It would also be problematic to prove that consumers would identify the services provided by the store just by looking at the store layout. Instead of associating the store layout with the service of selling and repair of electronic products, consumers might associate the store layout with the electronic products produced by the traders. On the contrary, if a restaurant sought to register its store layout which contains inherently distinctive decorations to promote a specific dining environment, as in Two Pesos v Taco Cabana,29 where the decorations were to mimic a Mexican atmosphere, the layout would be distinctive enough to be registered under EU law. Ordinary restaurant environments, as in Happy Pizza Franchise, LLC v Papa’s Pizza Inc.,30 where the plaintiff’s trade dress consisted of a big menu, neon signage, steel shelving and stacked pizza boxes and so on, is unlikely to be regarded as sufficiently distinctive. A store layout may also be interpreted as a shape mark because a store layout itself can be considered as a shape, or an arrangement of different shapes. A mark is only distinctive if it can be established that the shape is a substantial deviation from the usual usage in a particular field.31 It must ‘significantly depart from the norm or customs of the sector’, such that the relevant consumers would notice it and would think of the shape as indicative of the trade source.32 Prior to the judgment in the Apple case, few court decisions dealt with service marks similar to store layout in the EU. In general, it is difficult for an applicant to bring in evidence to prove that the shape is inherently distinctive because the general approach is that an average consumer would not view a shape as indicative of the trade source. In Smart Tower,33 which concerns the shape of a building exterior, the Board of Appeal of OHIM (as it then was) noted that the relevant public usually recognizes the affiliation of a building to a particular company through other design elements rather than the design of the building itself. Furthermore, since building designs are usually perceived from a distance, the alleged connection between the building’s exterior and shape and the service provided is less obvious. Arguably, a different interpretation would apply in relation to store layout. This is because, unlike an exterior design, consumers would perceive an interior design closely and that consumer behaviour would be directly affected by the layout, as proven by behavioural science.34 In this case, if there is a substantial deviation from the norm in the particular industry, the store layout would likely be distinctive. This appeared to be the approach taken by the German Federal Patent Court, which considered the Apple store design to be distinctive because there are a significant number of unique features that deviated substantially from the usual interior design of retail stores, such as the lack of commonly used storage spaces and a recognizable cashier area. Arguably, notwithstanding Apple’s stores’ minimalist design, the design is sufficiently distinctive. It is not a prerequisite that the visual appearance of an object has to be complicated to be distinctive. In fact, it may be the clean and elegant nature of Apple’s store layout design that makes it distinctive in nature. However, contrary to the view of the Federal Patent Court, the German Patent and Trade Mark Office held that consumers would not perceive the Apple store design as an indication of source of the services provided. The representation of the Apple store was found not to be substantially distinctive compared to other retail stores offering electronic consumer products. Instead, the trade source would be perceived by means a word mark or a logo. The relevant public would view the store layout as an indication of Apple’s high quality and price category. From the inconsistencies in judicial approach, it reflected that the area of law on inherent distinctiveness is not only highly fact-specific, but would also depend heavily on the interpretation adopted by different authorities. Another issue is that the focus of the CJEU seems to be based on textual components of a trade mark. This is reflected by the restrictive approach adopted. For instance, the CJEU had repeatedly made the assumption that relevant consumers would not regard a shape as being indicative of a particular commercial origin.35 This assumption is not well-supported by empirical evidence or behavioural science.36 Evidence shows that shape marks can function even quicker and better than other more conventional signs as a means to attract a consumer’s attention and differentiate products and services.37 Another example would be the CJEU’s assumption that consumers are unlikely to think about the origin of goods based on their colour.38 Again, this is not supported by cognitive science as colour marks do constitute a strong and pervasive means of identification for consumers as they are linguistically neutral.39 It is the writer’s view that the CJEU should not neglect scientific evidence. This is because the assumptions made without scientific basis would be unconvincing, making it unfair to unconventional mark holders whose mark is actually an effective and useful means for consumers to identify the source of the product or service. Practically speaking, however, it would be advantageous to maintain a higher threshold for registration of unconventional trade marks as such marks are considerably more difficult to enforce than conventional ones. Applicants might be able to overcome the lack of inherent distinctiveness by showing acquired distinctiveness by establishing a high degree of reputation among the relevant public through use. To do so, the applicants must establish that a significant proportion of the relevant public associates the mark with the goods or services from that trader.40 To prove the necessary degree of market recognition, all relevant factors have to be taken into consideration, including the market share held by the mark, the intensity of use and the geographical range and so on.41 It would be considerably easier for traders with reputation to satisfy this requirement. 3.2. Scope of protection It would be difficult for competitors to determine the protection offered by a store layout trade mark, especially with regard to the way in which the CJEU dealt with the issue in the Apple case. The CJEU confirmed that indications of size or proportions of the layout of retail store were not relevant to the registration of a trade mark. The graphic representation that Apple submitted would be sufficient because it ‘depicts the layout of a retail store by means of an integral collection of lines, curves and shapes … provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings.’42 However, this decision may be problematic for competitors to determine the scope of protection because such vague or simple graphic representation, similar to that provided by Apple, may not provide sufficient clarity and indications for competitors in the field. Furthermore, some commentators argued that the CJEU decision in the Apple case is not in line with the decision in Sieckmann, which requires a graphic representation to be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective.’43 As no dimensions or any additional descriptions were needed for registration, the graphic representation of Apple store is neither clear nor precise. The post-Apple approach may be contrary to the approach adopted by the United States Patent and Trademark Office (USPTO), where the applicant must provide a clear and precise description of the trade mark that is sufficient in defining the elements and the scope of the store design sought to be protected.44 The USPTO initially refused Apple’s retail store registration on the basis that the graphic representation is completely unclear with regard to what the applied mark would consist of.45 The USPTO only accepted Apple’s application after Apple resubmitted a much more detailed description of the mark, describing every aspect of the store as follows: The store features a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store’s ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and a long table with stools located at the back of the store, set below video screens flush mounted on the back wall. The walls, floors, lighting, and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items are considered to be part of the overall mark.46 From a competitor’s standpoint, the Sieckmann criteria should be followed more closely by requiring applicants to present a more precise graphic representation with clearer reference to the size, proportions and dimensions, allowing competitors to understand clearly what the mark entails and help to prevent unfair competition within the same industry. From a trader’s standpoint, a certain degree of uncertainty in the graphic representation would be beneficial as protection offered by the registration would then be more flexible. The removal of the graphic representation in the new EU Trade Mark Package will likely have little effect on store layout registration. This is because, in practice, graphic representation would still be necessary to represent the store layout clearly and precisely, given that a store layout is highly dependent on designs and illustrations. Furthermore, it seems that the threshold for a sufficient representation is not lowered under the new requirement because the Sieckmann criteria are referred to in the new Trade Mark Directive.47 Although the way in which the new provisions would be applied in practice remains unknown at present, taking current case law into consideration, it is unlikely that the simple graphic representation submitted by Apple would be sufficient. 3.3. Potential anti-competitive effects As with other unconventional trade marks, there is concern that the registration of store layout would create potential anti-competitive effect among traders of the same industry.48 Excessive protection of store layout could reduce competition substantially. This problem could be resolved by raising the bar for trade mark protection, for instance, with regard to distinctiveness. However, if the protection granted was too minimal, traders’ incentive for creation might be substantially reduced and the public would be left with few creations to choose from in the market. 4. Enforcement of store layout trade marks Registration is one thing and enforcement is another. After successful trade mark registration, difficulties would arise in enforcement, for example in relation to the degree of similarity between the registered layout and the copied layout by an imitator. It is unclear how the trade mark might affect Apple’s competitors (such as Samsung and Microsoft) whose store layouts are somewhat similar to Apple’s.49 In addition, there would still be queries on the scope of protection relating to the mark.50 As no size or dimensions are provided in the graphic representation in the Apple case, the judge in an infringement action would have to evaluate the differences in the dimensions of store layouts of the alleged infringer in order to decide whether they are within the scope of protection.51 It would therefore be difficult for competitors to assess likely risks of infringement. Furthermore, store layouts are usually used together with other more conventional trade marks. For example, the trade name of the business is usually placed in an eye-catching position of the store.52 Thus, it is likely that both the word logo and the shop design would be considered as ‘a composite sign’.53 In this situation, confusion as to the trade source might be unlikely. Traders would have to provide strong evidence showing that the store layout itself can be used to identify the trade source, regardless of other conventional marks. Even if the store layout was clearly defined, it would be relevant for traders to consider the effects of the brand names in the sign. This is because if a link can be demonstrated between the layout and the brand (for example, by means of advertising), the brand name would clear any possible confusion on the trade source.54 5. Concluding remarks Nowadays the majority of the most successful retail companies invests substantially in advertising and brand-building with the aim of promoting their values and building a strong and loyal consumer base. The CJEU decision in the Apple case could prompt such already well-established retailers and franchisors to adopt more standardized store layouts in order to maintain a distinctive identity on the market. The CJEU decision could also encourage small, emerging businesses to increasingly adopt an innovative and novel store layout. However, the decision also demonstrates clearly that the store layout design must be substantially different from the norm in order to fall within the scope of protection. It is expected that only very peculiar layouts would meet the required threshold. The result would be beneficial to the public as more varieties of products and services would be available on the market. There are numerous hurdles in the enforcement of store layout trade marks. At the moment protection of unconventional trade marks remains in fact both uncertain and expensive. Arguably, the potential availability of store layout trade marks protection might favour large organizations at the expense of small set-ups and new entrants to the market, irrespective of which business is the source of the creation. Despite this, there are benefits in enabling registrations for limited sets of factual circumstances. Extending trade mark protection to store layouts would provide an additional and stronger level of protection. The removal of the graphic representation requirement in the EU Trade Mark Package could also facilitate the registration of store layouts and other unconventional trade marks. All this is in line with the European Commission’s objective to modernize the existing system. Overall, registration of trade marks for store layout should be welcomed in the EU, notwithstanding the potential issues in registration and enforcement. As the laws in unconventional trade marks would develop mainly through litigation between traders, competitors and alleged infringers—rather than through legislation—it can be foreseen that future cases could serve as potential guidelines for traders in this fact-specific and judge-made area of law. The author wishes to acknowledge Dr Eleonora Rosati, Associate Professor in Intellectual Property Law, University of Southampton, for her unlimited support and invaluable advice. Appendix I – Figures and Images Figure 1. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 1. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 2. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 2. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 3. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 3. View largeDownload slide A fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 4. View largeDownload slide Image of the staircase in a fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Figure 4. View largeDownload slide Image of the staircase in a fake Apple store in Kunming, China. Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July 2011), <https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/ > (accessed 20 May 2017). Footnotes 1 R. Tushnet, ‘Gone in sixty milliseconds: trade mark law and cognitive science’ (2008) 86 Tex Law Rev 507, para 513. 2 D. Schloss, ‘Special problems in registration of non-traditional trade marks’ (1999) Intellectual Property Strategist. 3 Tushnet (n1), 513; R. Pieters and M. Wedel, ‘Attention capture and transfer in advertising: brand, pictorial and text-size effects’ (2004) 68 J.Mark 36, para. 37. 4 Judgment in Apple Inc v Deutsches Patent-und Markenamt, C-421/13, EU:C:2014:2070. 5 N. Hohn-Hein, ‘Registering store design as a trademark in the United States and Germany: a comparative analysis’ (2015) 105(6) TMR 1295, para. 1299. See, for example: Abercrombie & Fitch Stores v Hunting World Inc 1976; Cohen 1986; Two Pesos v Taco Cabana 1992. 6 K. Philip, ‘Atmosphere as a Marketing Tool’ (1973) 49(4) J Retailing 48, para. 50. 7 Hohn-Hein (n5), paras 1295–6. 8 Exterior perception refers to the manner in which the visual design captures one’s attention. 9 Eye-fixation refers to the maintaining of the visual gaze on a single location. 10 Pieters and Wedel (n3), paras 36–9. 11 Pre-attentive process refers to how an individual processes sensory information subconsciously without attracting attention from conscious mind. 12 B. Hall, ‘A new model for measuring advertising effectiveness’ (2002) 42 J Advert Res 23. 13 See for example S.W. Kopp and J. Langenderfer J, ‘Protecting appearance and atmospherics trade dress as a component of retail strategy’ (2014) 33 J PP&M 34; T. Farkas, ‘Trademark Protection for store designs: one trademark a day keeps Apple’s competitors away’ (2014) 18 Revista la Propiedad Inmaterial 323. 14 Euromoney Institutional Investor PLC, ‘What business owners can learn from Apple’s store trade mark’ (2013) 228 MIP 87. 15 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) para. 17. 16 Reuters, ‘How fake Apple stores in China are cashing in on the new iPhone’ (The Telegraph, 24 September 2015), http://www.telegraph.co.uk/finance/china-business/11887270/How-fake-Apple-Stores-in-China-are-cashing-in-on-the-new-iPhone.html. 17 Nycmidwife, ‘Over to you guys: fakery around China and the World’ (BirdAbroad, 23 July 2011), https://birdabroad.wordpress.com/2011/07/23/over-to-you-guys-fakery-around-china-and-the-world. 18 Nycmidwife, ‘Now it’s your turn: send me you fake Apple pics!’ (BirdAbroad, 21 July 2011), https://birdabroad.wordpress.com/2011/07/21/now-its-your-turn-send-me-your-fake-apple-pics. 19 See Figures 1–3. 20 BBC Technology, ‘Chinese authorities find 22 fake Apple stores’ (BBC, 12 August 2011), http://www.bbc.co.uk/news/technology-14503724; T. Thornhill, ‘The fake Apple store in China so convincing that even its staff are fooled’ (Daily Mail, 22 July 2011), http://www.dailymail.co.uk/news/article-2016885/Fake-Apple-store-China-convincing-staff-fooled.html; Nycmidwife, ‘Are you listening: Steve Jobs?’ (BirdAbroad, 20 July, 2011), https://birdabroad.wordpress.com/2011/07/20/are-you-listening-steve-jobs/. 21 See Figure 4. 22 Directive 2008/95/EC of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks [2008] OJ L299/25, Article 2. 23 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) para. 8. 24 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) para. 17. 25 Judgment in Apple Inc v Deutsches Patent-und Markenamt (n4) paras 21–2. 26 EUIPO, First Board of Appeal, R1135/2015-1, 03/29/2016. On this judgment, see also M. Giannino, ‘KIKO: the EU IPO rejects an EU trade mark application for the layout of cosmetics retail stores’ (2016) 11(9) JIPLP 648. 27 EUIPO, First Board of Appeal, R1135/2015-1, 03/29/2016. 28 F. Manjoo, ‘Welcome to the Microsoft Store’ (Slate, 25 April 2012), http://www.slate.com/articles/technology/technology/2012/04/microsoft_store_it_s_a_blatant_rip_off_of_the_apple_store_and_it_just_might_save_the_company_.html (accessed 20 May 2017); S. Fiegerman, ‘8 companies that have deliberately copied the Apple store’ (Business Insider, 16 July 2012), http://www.businessinsider.com/these-companies-have-deliberately-copied-the-apple-store-2012-7?IR=T (accessed 20 May 2017). 29 Two Pesos v Taco Cabana (1992) 505 US 763. 30 Happy’s Pizza Franchise, LLC v Papa’s Pizza Inc., 2013 WL 308728 (ED Mich Jan 25, 2013). 31 Judgment in Henkel KGaA v OHIM (Trade Marks and Designs) (OHIM), C-218/01, EU:C:2004:258, para. 39. 32 Judgment in Henkel KGaA v OHIM (Trade Marks and Designs) (OHIM) (n30) para. 49. 33 Smart Tower, C-R 1/2003-4 (Eur Comm. Trade Marks Office, Boards of Appeal). 34 J. Baker, D. Grewal and M. Levy, ‘An experimental approach to making retail store environment decisions’ (1998) 68 Journal of Retailing 445. 35 Judgment in Eurocermex SA v OHIM, T-399/02 (n22) para. 23; Judgment in Linde AG, Winward Industries, Radio Watch Co. Ltd, Joined Cases C-53/01-55/01, EU:C: 2003:260, para 48; Judgment in Libertel Groep BV v Benelux-Merkenbureau, C-104/01, EU:C:2003:244, para 65. 36 Pieters and Wedel (n3), paras 37–9. 37 Ibid. 38 Judgment in Libertel Groep BV v Benelux-Merkenbureau (n29), para. 65. 39 S. Sandri and S. Rizzo, Non-Conventional Trade Marks and Community Law (1st edn, Marques, 2003), p. 70. 40 Judgment in Windsurfing Chiemsee, joined cases C-108/97 and C-109/97, EC:C:1999:230, para. 52; judgment in Koninklijke Electronic NV v Remington Consumer Products Ltd, C-299/99, EU:C:2002:377, para. 65. 41 Judgment in Windsurfing Chiemsee, joined cases C-108/97 and C-109/97, EC:C:1999:230, para 47; judgment in Oberbank AG, Banco Santander SA, Santander Consumer Bank AG v Deutscher Sparkassen- und Giroverband eV, joined cases C-217/13 and C-218/12, EU:C:2014:2012, para. 41. 42 Apple Inc v Deutsches Patent-und Markenamt (n4), paras 16–17. 43 G. Glas and N. Vanavermaete, ‘What the CJEU’s ruling in Apple means for retailers’ (2014) 242 Managing Intellectual Property, 34, 35. 44 T. McCarthy, McCarthy on Trademarks and Unfair Competition (4th edn, Thomas Reuters) 8.3. 45 Glas and Vanavermaete (n42), 35. 46 The USPTO Registry, Registration Number 4,277,914 (Registered 22 January 2013). 47 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, OJ L 336, 1–26, Recital 13. 48 Farkas (n13), 323, 344. 49 C. Foresman, ‘Apple granted trademark protections for the interior of the Apple store’ (Ars Technica, 30 January 2013), http://arstechnica.com/apple/2013/01/apple-granted-trademark- protections-for-the-interior-of-the-apple-store/ (accessed 21 May 2017). 50 BP Amoco Plc v John Kelly Ltd [2002] FSR 5, CA (NI). 51 J. Blum and A. Cullen, ‘The Apple store and unconventional trade marks: how easy are they to enforce?’ (2014) 9 JIPLP 1008, 1009. 52 Ibid, 1009. 53 Ibid, 1010. 54 See, for example, judgment in Specsavers International Healthcare and others, C-252/12, EU:C:2013:497, paras 42–50. © The Author(s) 2017. Published by Oxford University Press. All rights reserved.

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Journal of Intellectual Property Law & PracticeOxford University Press

Published: Mar 1, 2018

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