Trademark protection for store designs. One trademark a day keeps apple’s competitors away

La protección de marcas para los diseños de tiendas. Una marca al día mantiene a los competidores de Apple fuera de la vía

Thomas Farkas^*

^* Ph.D. Max Planck Institute for Innovation and Competition/Free University Berlin, Attorney-at-Law; comments and feedback are very welcome: thomas.farkas@alumni.ip.mpg.de.

Fecha de recepción: 2 de septiembre de 2014. Fecha de aceptación: 18 de septiembre de 2014.

Abstract

Companies spend a significant part of their investment in order to create a brand experience for the consumer. Besides large sums spent on the design of consumer goods, companies such as Apple are eager to create a brand experience by implementing a certain store design. Hence, these companies have a well-reasoned urge to protect such distinct store designs utilizing the current intellectual property system. In the tradition of the U.S. approach, where the get-up of a business venue can be protected by trade dress law, the most recent European Jurisprudence seems to tend towards the protection of such a get-up by trade mark law. As this could be good news for companies with a distinct store concept and design, this new approach also raises some concern: How will the protection of the get-up of a business venue affect competition? What are the measures to guarantee only distinct and non-functional store designs will find their way into the holy land of trade mark protection?

This article analyzes and compares the current legal situation in the U.S. and the EU and discusses the available measures in place that will safeguard an undistorted competition.

Keywords: Trade dress, protection of the get-up of a business venue, Apple store, European Trade Mark Law, U.S. Trade Mark Law.

Resumen

Las empresas gastan una parte importante de sus recursos en generar una experiencia de marca para el consumidor. Además de las grandes sumas gastadas en el diseño de los bienes de consumo, compañías como Apple están ansiosas de crear una experiencia de marca mediante la aplicación de un determinado diseño de tienda. De ahí que estas empresas tengan una necesidad bien razonada de proteger esos diseños de tiendas a través del actual sistema de propiedad intelectual. Mientras el enfoque de Estados Unidos se dirige a proteger el aspecto exterior de une tienda mediante la figura del trade dress, la jurisprudencia europea más reciente parece orientarse hacia la protección de la misma por el derecho de marcas. Todo esto podría ser considerado como una buena noticia para las empresas con un concepto de tienda o establecimiento de comercio diferente, y el diseño de este nuevo enfoque también plantea cierta preocupación: ¿cómo puede afectar la competencia la protección del aspecto exterior de una tienda de negocios? ¿Cuáles son las medidas para garantizar que solo los aspectos distintivos y no funcionales que se reflejan en el diseño de una tienda pueden encontrar protección en el sistema marcario? El artículo compara la situación legal actual en Estados Unidos y en la Unión Europea, y examina las medidas disponibles cuando se busca salvaguardar una competencia no falseada.

Palabras clave: Trade dress, tienda de Apple, derecho de marcas europeo, derecho de marcas norteamericano.

Introduction

Companies spend significant sums implementing a special look for their products and brands in order to stand out from the competition. With the competition not only taking place within a country but across the globe the need to give the consumer a unique brand experience is more important than ever. The extension of intellectual property rights and their scope of protection play a vital role in this scenario. In Europe for example, not only has the legislator introduced new means of protection¹ but also extended the scope of protection of existing intellectual property rights. In the course of the harmonization of the European trademark regime, the Trademark Directive²(“TMDIR”) and the Trademark Regulation³, the European legislator widened the protection offered by trademarks. First of all, the possibility to register a throughout the European Community with a single application extends its territorial scope. Secondly, the term for signs being capable of registration has been extended. Art. 4 of the trade mark regulation stipulates the criteria for a sign to be eligible for trademark protection⁴. Said provision introduced new types of trademarks such as color marks⁵, olfactory marks⁶, sound marks⁷ and haptic marks⁸ into the legal system of the EU.

The industries reaction on said extension of trademark law followed in an instant. Hence in both, the U.S. and the EU regime, a more extensive and rigorous use of trademarks can be observed. Companies will equip and up value their products utilizing position marks⁹, color marks¹⁰ and will at least try to obtain protection via shape marks for the products itself¹¹. Often the same products are also registered as designs according to the new EU framework for Design right. Simultaneously their features could also be protected as copyright¹² or according to unfair competition law/passing-off¹³.

Besides the practice of cumulative protection for goods offered through the whole arsenal of intellectual property rights, a relatively new phenomenon could be on the rise, at least from an EU perspective: the protection of the get-up of business venues.

This article aims to analyze the legal basis for the protection of a business venue’s get-up via intellectual property rights. The analysis focuses on the current framework in the US and in the EU. While it will be shown that the US-American Law has been familiar with the phenomenon of the protection as a “trade dress”, the legal evaluation of the protection of business venues in the EU as such is still in its infancy. Finally this article will assess if such protection is desirable¹⁴.

I. Implications of designing a business venue

Especially in recent years the enhanced and sophisticated design of business venues such as retail stores and restaurants alike demonstrate the emphasis on the will to stand out from the competition; furthermore such an advanced design communicates the message of the brand to the consumer¹⁵. It is the ultimate goal of any company to gain a recognition value amongst the target consumers for the design of the business venue. A consumer’s positive experience is likely to drive him into a business venue on a more regular basis. In order to successfully gain consumer loyalty, companies make circumspect investments not only financially but also with thought through marketing strategies. In the end a lot of effort and investments are spent on the design of the business venue in order to give the consumer said special brand experience. Due to these investments companies have a well-reasoned urge to protect these investments utilizing intellectual property rights. But due to the crisp details and the comprehensive design of the venue in question it is often not easy to accomplish said protection for the whole design of the business venue. While single features can be protected by design law, copyright and trademark law¹⁶ it proves rather difficult to protect the get-up, the sign of a business venue as whole.

Despite the legal issues when protecting the get-up of a business venue companies are keen to design their venue with a distinct overall appearance. Companies such as Apple, the German based electronic warehouses Saturn Hansa and media markt, apparel retailers Hollister, Abercrombie & Fitch, Tommy Hilfiger and Restaurant chains McDonalds, Vapiano or Crepes and Waffles emphasize on creating a consumer experience of the same atmosphere, store concept, store design and the same menus¹⁷. The educated customer recognizes these business venues on first sight and even more when entering their facilities.

The following part analyzes the protection of the get-up of these business venues according to the legal institutes of trademark and unfair competition law in the U.S.¹⁸ and the EU.

II. Means of protection for business venues/stores

A. US Law - Trade dress

The protection of trade dresses is well established in the U.S.’s legal system. Section 43 (a) (1) of the Lanham Act defines the protection offered by a trade dress. It reads as follows:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

1. Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
2. In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

In General, visual but non-verbal marks are collectively known as trade dress¹⁹. The protection of a trade dress is only historically different to that of trademark protection. Today trade dress protection is coined by the notions of trade mark law²⁰. According to the provision mentioned above, the design and shape of the materials in which a product is packaged, the product configuration, the design and shape of the product itself, can be considered as a form of trade dress²¹. The International Trademark Association inta confirms that a trade dress can be incarnated as the “overall commercial image (look and feel) of a product or service that indicates or identifies the source of the product or service and distinguishes it from those of others. It may include the design or configuration of a product; the labeling and packaging of goods; and/or the décor or environment in which services are provided. Trade dress can consist of such elements as size, shape, color²² and texture, to the extent such elements are not functional. In many countries, trade dress is referred to as “get-up” or “product design”²³.

According to 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. The protection of trade dress has raised multiple issues not encountered in word marks. The issues concern amongst others the anticompetitive effects of trade dress protection and its conflicts with other intellectual property rights such as patent law and copyright²⁴.

Although the current legal system in the U.S. offers protection for a trade dress also by registration as a trademark²⁵; practical reasons implicate that most trade dress and product configurations are protected without registratio²⁶. If the trade dress is unregistered, the trade dress owner has to overcome the hurdle of precisely demonstrating which features of his product or packaging constitute the trade dress²⁷. Furthermore he has to prove that the alleged trade dress is protectable; he must establish that there is a likelihood of confusion²⁸. The assessment of similarity will be evaluated by comparing the respective trade dress designs. With regards to the other factors to prove likelihood of confusion it should be mentioned that these are in principal the same as when comparing traditional trademarks or logos. In regards to trade dress protection for services it must be assessed whether or not the consumer is predisposed to view the trade dress as a source indicator²⁹.

For both, the registered and the unregistered trade dress, the criteria to be assessed are distinctiveness, non-functionality and infringement by likelihood of confusion³⁰. Furthermore the indication of origin is in the center of trade dress protection: the features that indicate the trade dresses origin are to be protected; ingredients of innovation and creativity cannot be protected by trade dress or trade mark law³¹.

So in what cases does a trade dress offer protection to business venues?³².

1. Case Law - Two Pesos v. Cabana Inc.

One of the leading cases in the U.S. covering trade dress protection for a business venue is the Supreme Court decision in Two Pesos Inc. v. Taco Cabana³³. The case concerns the protection of the get-up of a Mexican themed restaurant, respectively Taco Cabana. Restaurants of the Taco Cabana chain are designed in a typical Mexican way. Both, the exterior and the interior of these fast food restaurants bear typical distinct Mexican style features and motives. The restaurants of the Taco Cabana chain all incorporate the same features as a matter of their corporate identity. The claim was made against the direct competitor Two Pesos. The defendant Two Pesos utilizes the same style elements in his restaurants as the plaintiff.

The US Supreme Court confirmed the decision of the previous instance. This case demonstrates the assessment of trade dress infringement according to the following criteria:

a. Eligibility for Trade Dress protection

First of all, the get-up of the business venue, the restaurant Taco Cabana, must be eligible for trade dress protection. Due to the fact that Taco Cabana did not register their get-up as trade dress, the competent courts could only judge on a claim for an unregistered trade dress. As mentioned above, the protectable features are defined as any word, any name, any symbol or devise or any combination thereof that can be used by a person to mark their goods. The legal protection of a trade dress relates especially to the elements that are able to enhance the sale of goods or services³⁴. The U.S. Supreme Court did not comment if the get-up of a business venue is eligible as a unitary mark. Instead the competent Court argued in favor of a strong protection for designs. Trade dress protection shall hence be available a get-up showing the intent to protect the marketing investments made and the resulting value of the business. This includes also the protection of the consumer’s ability to differentiate the business of those of competitors³⁵. It was argued that the federal protection of a mark is desirable as such trade dresses would enhance competition and the quality of the businesses output; in this regard the protection would secure the reputation and the good will of the business in question³⁶. Consequently the Supreme Court did not see an issue positioning the get-up of Taco Cabana’s business venues under the umbrella of trade dress protection even if the get-up would consist of multiple single features³⁷.

b. Distinctiveness

In order to obtain trade dress protection the relevant feature(s) must be capable of distinguishing the goods and services of the right owner to those of a competitor³⁸. According to the US approach to distinctiveness it must be differentiated between signs that are inherently distinctive and such that acquired secondary meaning³⁹. The get-up of a product or service is only then inherently distinctive if it is suggestive, arbitrary or fanciful⁴⁰; a generic or merely descriptive feature can only acquire distinctiveness through secondary meaning⁴¹.

In this regard the defendant in Taco Cabana v. Two Pesos stated that the get-up of the plaintiff’s business venues was merely descriptive: he argued that the get-up merely constituted an indication of Mexican food being served. The defendant compared the get-up in question to a factual sign stating that Taco Cabana is a “Mexican restaurant”. On behalf of the defendant it was consequently argued that the plaintiffs get-up could only be regarded as distinctive if it already acquired secondary meaning.

The U.S. Supreme Court did not accept this argument; he held the plaintiffs get-up to be inherently distinctive. Furthermore the property interests of the plaintiff in his unique and valuable marketing device, the get-up of the restaurants, were to be recognized irrespective of the relevant consumer associations that would prove acquired distinctiveness through secondary meaning⁴². In its judgment the U.S. Supreme Court pointed out that the requirement of an additional secondary meaning could harm competition as it would stifle the start-up phase of small businesses⁴³.

It should be noted that in other cases U.S. courts focussed on secondary meaning in order to grant protection⁴⁴. In a more recent judgment the U.S. Supreme Court pointed out, that in order to obtain trade dress protection acquired secondary meaning must be proven unless the case would concern a get-up constituting the product itself⁴⁵-⁴⁶.

c. Functionality doctrine

According to Sec. 43(a) (3) of the Lanham Act⁴⁷ the claimant must prove that the get-up for which protection is sought is not merely functional. From the spirit and the purpose of the provision a merely functional design should be free for all to use and imitate as long as no other intellectual property rights appl⁴⁸. Otherwise the freedom of competition would be too harshly restricted⁴⁹.

Therefore it must be assessed whether or not the features of the get-up in question are essential for the usage or the purpose of the goods or services and if these features influence the value or the quality of the goods or service. The functionality of single features does not necessarily lead to the conclusion that the get-up as such is also merely functional. On the other hand the possibility to have a different design or proven distinctiveness does not preclude functionality⁵⁰. In case the feature of the get-up is also protectable as a patent concedes it to be functional even if the patent is exhausted⁵¹.

In Taco Cabana v. Two Pesos the U.S. Supreme Court held the plaintiffs get-up not to be functional. This argument is correct in so far, as the design of a business venue is not essential for the service it provides. Even if single features of the get-up, such as the menu, would fulfill the criteria for the functionality doctrine, this does not convey functionality on the get-up as a whole.⁵² Even when applying the Inwood test the get-up of the plaintiff’s restaurant does not directly concern the quality and the pricing of the respective goods and services⁵³. Even if the sophisticated design of the business venue will influence the costs of the offered goods and services this indirect influence was not regarded to be sufficient to reason for functionality.

According to this argument the functionality doctrine will not be an effective hurdle for the get-up of a business venue to obtain trade dress protection.

d. (Reputation of the get-up)

The reputation of the get-up as such is not an obligatory requirement for protection. This becomes even clearer when considering the fact that distinctiveness must not per se be proven through secondary meaning. Nevertheless the threshold for distinctiveness cannot be judged with certainty according to the current legal status. The protected get-up of restaurants such as Dunkin’Donuts and Taco Cabana are mainly operated via franchise systems. The judgment in Taco Cabana v. Two Pesos implies that the operation of multiple franchise restaurants with identical design and corporate identity strengthens the distinctiveness because of their presence. Also this conclusion can be drawn from another case involving the get-up of a business venue, respectively a barber shop chain. Here the get-up of the single business venues were not identical and contained slight modifications. The protection of the get-up was regarded as not eligible for trade dress protection due to the above mentioned differences⁵⁴.

2. Other case Law

The competent court in Best Cellars, Inc. v. Wine Made Simple, Inc., held that the overall décor and the design of the plaintiff ’s wine retail store constituted protectable trade dress. This decisions was made despite the existence of a number of elements that were utilitarian or commonplace in the industry (i.e., the placement of informational cards in front of wine bottles and arranging wine bottles horizontally in racks)⁵⁵.

As for registered trade dresses the fast food restaurant chain “Chipotle” owns a registration for its restaurant layout as shown below; the description reads “a restaurant evoking a neo-industrial feel through the use of unpainted galvanized or stainless steel” with “natural wood finishes as accents on the table and/chair edges, bench seating, wall finishes, and/or chairs”, and the “use of industrial-look light fixtures”. The first illustration shows the registration, the second photograph The illustrative comparison below demonstrates how such a description translates into the interior of a Chipotle restaurant:

The restaurant “Potbelly Sandwich”⁵⁶ also owns trademark registrations covering aspects of its restaurant layout and décor. This includes the U.S. registration No. 3494208. It describes the trade dress mark as “appearance and design of the interior of a restaurant produced by a combination of multiple counters of different heights forming a multi-level counter structure, a built-in glass front drink cooler, cubbyhole-style shelving, banner stanchions with chains/ropes and tile behind serving area. The solid lines show the positioning of the mark in connection with the restaurant and those features claimed by the applicant as its mark”. The illustration below shows said registration:

The illustration shown above prove demonstrate that registrations of a business venue’s get-up do exist and also that it will be difficult to judge an infringement based on these illustrations.

3. The Apple store case in the US

Especially when Apple found out that a store in China featured the white Apple logo, among other design details, was so authentic that even salespeople who worked there believed that they worked for Apple, they decided to attempt for further protection⁵⁷.

In early 2013 the U.S. Patent and Trademark Office (USPTO) granted Apple’s request for trademark protection for the minimalist design and layout of its retail stores comprised of “a clear glass storefront by a paneled façade” and the signature “oblong table with stools set below video screens flush mounted on the back wall”⁵⁸.

During the two-year trademark examination process, the USPTO was especially concerned with issues related to the functionality doctrine and the criterion of distinctiveness regarding Apples business venue. Apple was requested to explain as to why the claimed store design features were neither functional nor so standard in the industry as to be unprotectable. Furthermore Apple had to demonstrate that the trade dress had come to serve a source identifying function.

Accordingly Apple refined the trade dress features for which it sought protection multiple times. In the course of these arguments Apple also obtained and submitted a consumer survey to support its claim of acquired secondary meaning. The USPTO requested an even narrower description of the relevant features. Finally Apple submitted inquiries with hundreds more pages of documentation of secondary meaning to the USPTO. These included the following evidence: substantial business activity generated by the Apple stores, promotional events that were tied to Apple stores, photographs of the stores on Apple’s website, and numerous unsolicited media articles about the store design.

Ultimately, Apple was able to persuade the USPTO to allow its mark to be published for third-party objection. After the deadline for opposition period passed without objection, Apple’s marks matured to registration. Apple was able to successfully demonstrate to the USPTO that the get-up of their business venue is non-functional and has acquired distinctiveness sufficient to qualify for registration as a trade dress⁵⁹.

B. EU Law

1. Introduction

The most recent jurisprudence in the EU regarding the protection of get-up of a business venue has its origin from German jurisprudence. The German Federal Patent Court (“Bundespatentgericht”, abbreviated BPatG) referred questions to the ECJ on how to interpret the European Trade mark Law regarding the protection of Apple’s trademark application for its store design⁶⁰. Therefore the following part will discuss the protection of the get-up of a business venue according to German Law. Subsequently the ECJ decision answering the questions of the BPatG will be analyzed⁶¹.

2. Trade dress protection according to German Law

According to German Law the get-up of a store can mainly be protected by trade mark and unfair competition law⁶². Despite the fact that the origins of German Trademark law stems from the Act against unfair competition (“UWG”⁶³) unfair competition law⁶⁴, the former should at least in theory be less woven into unfair competition law as is the case in the U.S.⁶⁵.

a. Federal Patent Court - “Apple store” case

While the former German trade mark law denied the registration for three-dimensional shapes⁶⁶, the current trade mark law explicitly constitutes the possibility to register three-dimensional shapes⁶⁷. Obviously the possibility to register threedimensional shapes as trademarks raises some concern in regards of an overlap to other intellectual property rights. Can a technical feature which is contained in a three dimensional shape be registered? If so, how is it justified to have a perpetual monopoly granted by a trademark for a technical invention expressed in a threedimensional shape if in prior a patent for the feature was obtained?

The same considerations are relevant for the overlap of trademark law and design rights/Copyright law: should a three-dimensional shape be registrable as a trademark if a design right or copyright⁶⁸ protection could be obtained as well?

Shape marks that consist of a patentable innovation or an aesthetic feature protectable as a design right/copyright will make the other intellectual property rights, which offer only a limited term of protection and bear customized protection criteria, superfluous. The European legislator was aware of the issue of overlapping protection. In order to prevent such an unwanted overlap he introduced relevant sections in both, the trademark Regulation and Directive⁶⁹. The wording of Section 3 (1) (e) Trademark Directive⁷⁰ reads as follows:

The following shall not be registered or, if registered, shall be liable to be declared invalid:

signs which consist exclusively of:

(i) the shape which results from the nature of the goods themselves;

(ii) the shape of goods which is necessary to obtain a technical result;

(iii) the shape which gives substantial value to the goods⁷¹.

Despite the extension of protection offered by intellectual property rights in recent years the protection for trade dresses is rather a phenomenon occurring in the U.S. Especially when considering that a store design, the performance of a band or the atmosphere of a restaurant are protectable as well. The principal German view on the protection of such features is rather skeptical.

It was only in 2013, where the Federal Court of Patents had to decide on the registrability of above shown store design⁷² by Apple Inc. as a trade mark⁷³. The details of the case can be summarized as follows:

The plaintiff demanded extension of the internationally registered threedimensional shape mark to the German territory. The color of the illustration is “steel gray and light brown”, illustration as shown in the online accessible database of the USPTO⁷⁴. The illustration shown in the mentioned database is registered for the following services of class 35 of the Nice classification: “Retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories, and demonstration of products relating thereto”. The registration offers the following description: “The mark consists of distinctive design and layout of a retail store”⁷⁵.

The competent department of the German Trademark Office⁷⁶ has denied the protection of said illustration of a retail store reasoning that it would lack inherent distinctiveness. The illustration of the store was held to be exhausted in the illustration of the store and thus in the representation of the core features of the offered services. The design of retail stores and sales facilities is an effective and important marketing tool for the sale of consumer goods. The illustration of the retail store in question was found not to be distinctive from other retail stores offering electronic consumer goods. The difference of the illustration in question to the design of large warehouses specializing in electronic consumer goods would only stem from the latter bigger variety of goods and brands offered to the end consumer. Finally it was held that, the function as indication of origin for retail stores is usually achieved by the use of logos and brand names⁷⁷. Thus perceiving the get-up of a store, the consumer would draw conclusions to the quality and price range of the relevant goods, but not to their source⁷⁸.

Apple submitted a complaint to the BPatG seeking to reverse said decision and reasoned as follows:

The illustration for which protection was assumed to be inherently distinctive as it is unique for the relevant market. Trademark protection for a three-dimensional mark could not be denied with the argument that it is not intellectually separable from the offered services. Instead Apple assumed that it is in the nature of things that a three dimensional mark subsides with the subject matter of the application. They argued that due to the fact that services are immaterial, an illustration cannot be denied trademark protection simply because it illustrates the service itself. A service should not be exhausted in providing said service; it goes further. It is not reasonable to demand a higher threshold for the trademark protection for the get-up of a store than for any other three-dimensional shape. The illustration for which protection is sought must be regarded as inherently distinctive if it is different from the store designs used by competitors. Factually there are a significant number of unique features contained in the store design represented by the illustration: the lack of a recognizable cashier area, the pure presentation of the goods, the use of old style table without the use of retail platforms, the lack of point of sale palettes, the overwhelming strict observance of form and clear symmetric arrangement of the facilities. These details bear a strong recognition value. Even toy manufacturers, when offering a doll house store, officially refer to the model as “Apple Store”⁷⁹.

Furthermore the complainant added the following description to the illustration:

Protection is sought with regards to the colors light brown and steel grey. The mark reflects the design and the arrangement of a retail store. The get-up of the store consists of a transparent glass front, surrounded by a steel grey façade construed by panels. The glass front consists of rectangular oblong panels with slimmer panels attached to the sides. Inside the retail store there is a rectangular lighting system built into the ceiling displayed over the whole length of the retail store.

The walls on the side of the retail store bears light brown cantilever boards for displaying goods. The side walls bear cupboards with multiple racks. The middle section of the retail store features light brown rectangular tables, arranged in a row and parallel to the walls. They are arranged from the beginning to the end of the retail store. In the back of the retail store a rectangular table with bar stools is arranged below the back wall and in the same height of the TV Screens.

Finally the illustration shows dotted lines where products are to be displayed, which are not intended to be covered by the trade mark. Nevertheless the position is regarded to be part of the mark⁸⁰.

Taking the view that the dispute raises fundamental questions concerning harmonized European trade mark law, the BPatG decided to stay the proceedings and to refer the following questions to the Court of Justice:

(1) Is Article 2 of Directive [2008/95] to be interpreted as meaning that the possibility of protection for the ‘packaging of goods’ also extends to the presentation of the establishment in which a service is provided?

(2) Are Articles 2 and 3(1) of Directive [2008/95] to be interpreted as meaning that a sign representing the presentation of the establishment in which a service is provided is capable of being registered as a trade mark?

(3) Is Article 2 of Directive [2008/95] to be interpreted as meaning that the requirement for graphic representability is satisfied by a representation by a design alone or with such additions as a description of the layout or indications of the absolute dimensions in metres or of relative dimensions with indications as to proportions?

(4) Is Article 2 of Directive [2008/95] to be interpreted as meaning that the scale of the protection afforded by a trade mark for retail services also extends to the goods produced by the retailer itself?⁸¹.

The senate of the Federal Patent Court made the following considerations when referring the questions mentioned above to the ECJ:

The subject matter of the registrability of a three dimensional get-up of a store as a trademark for retail services is not regulated by law nor decided by the German Courts. The target to have streamlined criteria for obtaining a trade mark registration mentioned in the eighth recital of the Directive⁸² stipulates the need to refer this matter to the ECJ.

With regards to the first question the Federal Patent Court made the following considerations:

The senate tends to accept the protectability of the scope extension of the get-up as it takes the view that there are substantial differences to the get-up of competitors. Thus it is relevant for a final decision if the ECJ will regard the criteria of Art. 2 of the TMDIR as fulfilled. The provision does not define the term of a "sign“; however it’s nonexhaustive wording⁸³ names the following examples: "words, including personal names, designs, letters, numerals, the shape of goods or of their packaging“. However it does not mention the get-up of a service. This could reflect the intention of the legislator due to the fact that (1) the service mark was known before the introduction of the Directive; and (2) a service is immaterial and thus does not inherently have a get-up of its own.

On the other hand objects that are used to offer the service can be regarded as their embodiment e.g. the vehicle with regards to the service of transportation or as in the case at hand a get-up of a store with regards to retail services. Additionally and as already mentioned the wording of Art. 2 is non-exhaustive. Excluding the protection of the get-up of a service would contravene the intention to harmonize the internal market.

With regards to the second question the Federal Patent Court gave the following opinion:

A sign reflecting the get-up embodying the service must be graphically representable⁸⁴ and capable of distinguishing the services of those of a competitor. Furthermore it must not fall into the categories for absolute grounds for refusal.

Should the ECJ conclude that the get-up of a service falls under the nonexhaustive categories of Art. 2 TMDIR, then this second question is relevant for the issue, if the absolute grounds for refusal in Art. 3 TMDIR also apply to the mark in question.

According to the wording of Art. 3 TMDIR only those signs fall under the absolute grounds for refusal that consists of the shape of goods. From the wording alone, this provision does not apply to two dimensional signs. The Senate takes the view, that an extended applicability of these grounds for refusal beyond their wording is only justified in rare cases.⁸⁵ Nevertheless the grounds for refusal should be applicable in the case at hand as the same criteria must be applicable for goods and services alike. Otherwise competition would be distorted and marks consisting of get-up of services would be privileged if the absolute grounds for refusal would not apply⁸⁶.

The ratio of the provision could also speak for an extension of the grounds for refusal: the public interest of free access to goods and services should outweigh the interest of the trade mark owner for a perpetual monopoly if the goods and services in question are already protected by other intellectual property rights, e.g. patent and design law⁸⁷.

In the case at hand it is especially the Art. 3 i lit. e iii of the TMDIR that could constitute an absolute ground for refusal. Ann application will be denied according to Art. 3 i lit. e iii TMDIR if the get-up consists of a shape that adds substantial value to the service. The get-up of a retail store is the main feature in order to judge the quality of the shopping experience. Despite this fact the get-up of the shopping venue does not constitute the most relevant feature of the service “retail store”. To the same extent the shopping experience is to be judged by the quality of the goods and the other relevant services offered in the venue⁸⁸.

The senate asked but tends to deny the question, if a part of the bundle of services is sufficient to apply the absolute grounds for refusal.

With regards to the third question the senate of the Federal Patent Court made the following statements:

The Senate holds the get-up of a retail store as principally able to be a valid trademark. Despite this argument, the illustration in question must also be graphically representable according to Art. 2 TMDIR⁸⁹.

According to the ECJ jurisprudence a sign can be a trade mark, if the illustration at hand is clear (not ambiguous), precise (e.g. a color cannot merely be described as ‘purple’), self-contained (e.g. music notes), easily accessible (e.g. the Pantone international database), intelligible, durable (the graphical representation must remain consistent), and objective⁹⁰. The registration system alongside with its guarantee function is only efficient, if these criteria are fulfilled. Only then will there be legal certainty.

The ECJ has yet to decide how in particular the illustration of the get-up of a retail store must be represented in order to fulfill these criteria. In principal an illustration with a perspective of the retail store can be regarded as fulfilling the Sieckmanncriteria, if the scope of protection can be determined when perceiving the illustration.

The illustration of the retail store for which registration is sought shows it’s facilities. Nevertheless it does not give any certainty or guidelines to the degree of actual size of the retail store, it’s furniture, facilities and there relation in size to each other. Especially the size of the entrance area in relation to the depth of the retail store cannot be judged by perceiving this illustration. Hence it is only its overall impression that can be assumed when perceiving the illustration.

Subject to these considerations it must be stressed if Apple’s application for registration fulfills necessary “Sieckmann” criteria of clarity and precision. Despite these reasonable doubts the senate of the Federal Patent court took the view that an additional measurement chart would suffice to overcome the lack of certainty and precision. It then held a preliminary decision by the ECJ necessary in order to determine the criteria for the graphical representation in question.

With his fourth and final question the senate of the Federal Patent Court asked the ECJ, if the scope of protection of a service mark for retail stores does also cover goods that are produced by the retailer himself.

The ECJ has yet to decide this question, if a retailer can obtain protection only for goods of other traders or if his own label products are also covered by such protection⁹¹. In addition the national courts are yet to decide on this question. The senate took the view that the retailer must refer goods manufactured by third parties in order to obtain trademark protection for these services. Otherwise, in case of own label goods the distribution of such goods is regarded as only a supportive service for which trademark protection is to be available⁹².

Thus the senate opined that only the distribution of goods manufactured by third parties reaches the holy land of trademark protection. The retailer that distributes his own label goods primarily competes with other manufacturers. Hence the protection by trademark law can only cover protection of a trademark for the goods themselves. In case he distributes goods manufactured by third parties he is competing with other distributors. This is the reason that he then only can obtain trade mark protection for the service of distribution.

On the other hand there a valid argument could be that the distribution of own label goods in a retail store does not necessarily cover the whole range of goods. Instead the retailer often varies his range of offered products towards a certain target group from different regional areas with different taste and purchasing power. It could be argued that this selection also offers a valuable service beyond the mere distribution which would consequently speak for trademark protection.

With regards to all four questions the BPatG found that a preliminary decision of the ECJ was necessary; this decision will be discussed:

b. ECJ decision - “Apple Store” case

The ECJ answered the questions of the BPatG in the “Apple Store Case”⁹³. The decision can be summarized as follows:

In regards of the first three questions the ECJ came to the conclusion that “In the light of all the foregoing considerations, the answer to the first to third questions is that Articles 2 and 3 of Directive 2008/95 must be interpreted as meaning that 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 for services consisting in services relating to those goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings and that registration is not precluded by any of the grounds for refusal set out in that directive”⁹⁴. In regards of the fourth question the ECJ found that it was inadmissible⁹⁵.

c. German Act against Unfair Competition (“UWG”)

In contrary to the U.S. Law the German Law also offers protection to such threedimensional designs by the Act against Unfair Competition. Outside of the scope of intellectual property rights a fundamental element of German Law is the basic principle of freedom of competition and imitation⁹⁶. This principle underlines the notion that only intellectual property rights offer protection to creative output. If a creative output is not protected by an Intellectual property right, the output shall be free to copy. As an exception the Act against unfair competition can offer protection against the imitation of products or creative ideas only then, if there is an act of copying and an unfair element⁹⁷. The mere act of copying as such should not be regarded as unfair⁹⁸.

The Court of First Instance Münster had to decide on the protection of the get-up of a restaurant chain according to the UWG. The restaurant chain “Vapiano” claimed infringement of the trade dress of their business venue and seek to court to grant a preliminary injunction⁹⁹.

According to the facts of the case the plaintiff operates a system catering chain bearing the name “Vapiano”. All business venues of the plaintiffs chain offer an Italian style cuisine and all venues are identically designed in regards of both, the exterior and the interior. All furniture, decorations and menus are designed by a well-reputed designer. The designs have largely been made exclusively for the plaintiff.

The defendant operates a restaurant in the neighborhood of one of the plaintiff’s venues offering Chinese style fast food with a similar font as the plaintiff use for their trade name. The plaintiff proved that its customers regularly assume that both businesses are connected. Furthermore the plaintiff submitted evidence that the design of its business venue is honored by the press. Especially Vapiano’s atmosphere and the design features experience appreciation¹⁰⁰.

The competent court granted the plaintiff injunctive relief regarding the features of Vapiano’s get-up. It held that the defendants business venue caused a "preventable confusion“ and an "unfair dilution“ according to Sections §§ 3, 4 Nr. 9a and b UWG¹⁰¹.

In an analogous application of the supplementary protection of related rights under competition law the court held that this protection would also cover immaterial features, namely the design concept of the plaintiff’s business venue, which was found to be new and distinctive in comparison to those of competitors in the market. The protection offered by the UWG extends to the design concept as such, that was almost identically copied. The deviations in the offered goods and in the name were found to be only marginal. The relevant market could still assume a business connection between the plaintiff’s and the defendant’s business venue.¹⁰²

Conclusion

Both, the U.S. and the German Law system offer protection for the get-up of business venues. Furthermore both systems offer protection for single features of the get-up with their intellectual property system.¹⁰³

According to the U.S. Law the protection of the get-up of a business venue is provided by the institute “trade dress”; a claim for the infringement of a business venue’s the get-up based on unfair competition law will not suffice. In order to obtain trade dress protection the get-up of the business venue must be distinctive, either inherently or acquired though secondary meaning. Furthermore the get-up must not be functional. Lastly, a likelihood of confusion must be determined by the alleged infringing get-up.

According to German Law protection can be afforded by both, trademark and unfair competition law. With regards to the ECJ decision in the “Apple Store” it remains to be seen how the BPatG will decide after its questions have now been answered by the ECJ. In its decision the ECJ made clear that the high threshold for shape marks will also be applicable for the get-up of business venues. Only if the get-up is substantially distinctive from the standard design, it will be inherently distinctive. In this regard it remains to be seen how franchises such as “Vapiano” and the “Body Shop” will attempt to register their unique, but not necessarily inherently distinctive store designs. Questions also remain in regard of the enforcement of such trade mark applications. Competitors are not likely to advertise with the illustration from the trademark register, but instead will use single features of the get-up that are shown by the illustration. Complex issues concerning the degree of similarity between the marks could arise. Further it will be difficult to prove an infringing use of the trademark due to the criterion of secondary meaning. The consumer is likely to appreciate the get-up of a business venue in its aesthetic and technical design; despite this it is less likely that he will associate the design with goods and services offered in the business venue¹⁰⁴.

The ECJ decision does give some wiggle room for the BPatG: only such a sign is capable of being a trade mark for retail services, if goods by other manufacturers are to be sold. The protection of the illustration of a store design would then only cover retail with such goods by other manufacturers. Flagship stores as utilized by Apple, Gucci or Nike could not even argue to fulfill the criteria of compulsory use if they only sell their own.

Finally, an excessive protection of get-up and store design does raise some concern. The notion of freedom to copy could be undermined. A perpetual monopoly for designs and get-up would stifle competition. This issue can be solved by raising the threshold for protection, e.g. the level of required distinctiveness. While the court was rather generously accepting inherent distinctiveness of the restaurants designs in the Taco Cabana v. Two Pesos case, more recent decisions show a more reluctant assessment. In Wal-Mart Stores, Inc. v. Samara Brothers the U.S. Supreme Court leaned towards the assumption that for the protection of a products get-up distinctiveness acquired through secondary meaning must be proven¹⁰⁵. The functionality doctrine also prevents an overlap of protection with design and copyright law. But for business venues such as restaurants it will be not likely that the get-up as a whole will be regarded merely functional. This doctrine should be sharpened in order to lead to cut clear results regarding such trade dress cases. As discussed above, In Germany, § 3 MarkenG¹⁰⁶ limits the protectability of signs that consist of a shape, similar to the functionality doctrine. The protection via the unfair competition law does have a different approach. Thus it is questionable if the set of unfair competition protection is available parallel to trade mark protection¹⁰⁷.

Companies could utilize cumulatively the mentioned intellectual property rights in order to protect their concepts of store design. Sometimes protecting and nurturing the classic elements of one’s brand is more efficient than a financial burdensome fight for new means of protections. With the words of designers: “sometimes less is more”.

Notes

Bibliography

Bassewitz, Katharina von, Trade Dress und Functionality - Ein Vergleich des marken- und wettbewerbsrechtlichen Schutzes von Produktformen in den USA und Deutschland - Zugleich eine Anmerkung zum Urteil Antioch Co. v. Western Trimming Corp., GRUR Int 2004, 390-395.

Bornkamm, Joachim, Markenrecht und wettbewerbsrechtlicher Kennzeichenschutz zur Vorrangthese der Rechtsprechung, GRUR 2005, 97-102.

Cooley, Amanda Harmon, Trade dress protection of business décor: What is this tertium quid?, Southern Law Journal,vol. 18 (2008), [http://www.southernlawjournal.com/2008/02_.pdf], visited 20^th September 2014.

Dinwoodie, Graeme B., Trade dress and design law, New York, Austin, 2010. Dinwoodie, Graeme B., Trademarks and unfair competition, Law and policy, Third ed., 2010. Dinwoodie, Graeme B. & Janis, Mark D., Trade dress and design law, New York, Austin, 2010.

Eck (ed.), Wettbewerbsrecht, 2010 (cited: Eck).

Fezer, Karl-Heinz (ed.), Markenrecht, 2009 (cited: Fezer).

FLJ-29-1-sum-2009_sandberg, [http://www.swlaw.com/assets/pdf/publications/2009/07/01/FLJ-29-1-sum-2009_Sandberg.pdf] (visited 18^th September 2014).

Gausling, T., GERMAN Federal Supreme Court expands design protection: ‘Birthday Train’, Journal of Intellectual Property Law & Practice 9 (2014), 549-550.

Goldmann, michael, Eintragung der Darstellung einer Laden-Ausstattung als Marke, grur-Prax 2014 (21.09.2014), 349, [https://beck-online.beck.de/Default.aspx?vpath=bibdata/zeits/grurprax/2014/cont/grurprax.2014.349.1.htm&pos=4&hlwords=apple%c3%90+apple+#xhlhit] (visited 21^st September 2014).

Henning-Bodewig, Frauke, International handbook on unfair competition, Munich, C.H. Beck.

Hilliard, David Craig; Welch, Joseph n. & Widmaier, Uli, Trademarks and unfair competition, 9^th ed., New Providence, NJ, 2012.

Jacobs, Hara K.; Lee, Melissa L., Mitchell, Glenn & Wadyka, Steven J., U.S. trade dress law, A Primer for the new millenium, New York, NY, 2002.

Köhler, Jürgen, Das Verhältnis des Wettbewerbsrechts zum Recht des geistigen Eigentums - Zur Notwendigkeit einer Neubestimmung auf Grund der Richtlinie über unlautere Geschäftspraktiken, grur 2007, 548-554.

Matheson, Julia Anne & Cooke, Whitney devin, Is Your Store Design Unique? Trademark It, 2013 (visited 13^th September 2014).

McCarthy, J. Thomas, McCarthy on trademarks and unfair competition, vol. 1, Darfield, IL 2007.

McConnell, Akila Sankar, Making Wal-Mart Pretty: Trademarks and Aesthetic Restrictions on Big-Box Retailers, Duke Law Journal 53 (2004), 1537-1567, in: [http://scholarship.law.duke.edu/cgi/viewcontent.cgi?article=1223&context=dlj] (visited 20^th September 2014).

Navigating Fashion law, Leading lawyers on exploring the trends, cases, and strategies of fashion law, Boston, Mass., 2012.

Ohly, Ansgar & Sosnitza, Olaf (ed.), UWG, 6. Ed. 2014 (cited: Ohly & Sosnitza).

Pagenberg, Jochen, Trade Dress and the Three-Dimensional Mark - The Neglected Children of Trademark Law?, International Review of Intellectual Property and Competition Law, 2004, 832-843.

Sandberg, Scott C., Trade Dress: what does it mean?, Franchise Law Journal, 2009, [http://www.swlaw.com/assets/pdf/publications/2009/07/01/FLJ-29-1-sum-2009_sandberg.pdf] (visited 10^th September 2014).

Sander, Charlotte, Der Schutz von Geschäftsraumgestaltungen durch das Immaterialgüter- und Wettbewerbsrecht im deutschen und amerikanischen Recht, GRUR Int. 2014, 215-228.

Suthersanen, Uma, Design law, European Union and United States of America, 2^nd ed., London, 2010.