But on 10 November 2010 Apple went a step further and obtained registration of a three-dimensional trademark from the US Patent and Trademark office consisting of the representation, by a design in colour, of its flagship stores. Apple then sought to extend the trademark internationally which is when its problems started. On 24 January 2013 the German Trademark Authority refused the extension in Germany on the ground that the depiction of space was nothing other than the representation of an essential part of Apple's business. It was also devoid any distinctive character because it wasn't sufficiently distinguishable from the stores of similar companies.
The decision of the German authority eventually reached the German patent court (the Bundespatentgericht) which made a preliminary reference to the European Court of Justice asking it several questions which amounted to asking whether Apple were prohibited or not from trademarking the design of their stores in the EU. The ECJ started by reminding us that the subject-matter of any trademark application under the EU Directive (2008/95) must satisfy three criteria. First, it might be a sign. Secondly, it must be capable of graphic representation. Thirdly, the sign must be capable of distinguishing the goods or services of the applicant from that of other companies.
It was beyond argument, the court ruled, that designs were signs capable of graphic representation. So the first and second conditions were obviously satisfied. The ECJ also considered that the "representation, by a design, of the layout of a retail store is also capable of distinguishing the products or services of one undertaking from those of other undertakings and, hence, satisfying the third condition" as well. The European Commission pointed out in the course of the case that it is not impossible to imagine that a store could be laid out in such a way that its graphic representation could allow identification of the goods or services as originating from that particular company. So, all the conditions were satisfied.
The ratio of the decision of the ECJ is straightforward. If a national intellectual property authority is assessing a sign consisting of a design depicting the layout of a retail store then it must carry out that assessment in precisely the same way as it would for any other type of sign. As for Apple, it succeeded in persuading the court that such a sign may be registered provided that the sign is capable of distinguishing their services from those of other companies. So, we can expect to see more of these applications popping up across the EU in the near future.