Apple Takes a Bite Out of Retail.

Apple stores are more than just places to buy iPhones and MacBooks – they are experiences. We have all been to an Apple store and seen the distinct look and feel. From the sleek wooden tables to the iconic glass staircases. The layout is clean, minimalist and designed to showcase the products in the best possible way. But can the Apple store retail layout be trademarked?

The short answer is yes. In 2010, Apple filed a 3D trademark application for the design and layout of its flagship retail store. The application described features like the glass storefront, the Genius Bar, and the overall layout of the store. However, the application faced some challenges.

A key challenge to trademarking Apple’s store layout was proving that it is distinctive and non-functional. While Apple’s stores certainly have a unique aesthetic, arguably the layout is primarily functional – designed to create a seamless shopping experience rather than just to identify the brand.

In 2013, the United States Patent and Trademark Office (USPTO) initially rejected Apple’s application, stating that the design was merely ‘a collection of features that are not distinctive of Apple and do not create a unique, recognizable store layout’. However, Apple appealed the decision, and in 2014, the USPTO reversed its decision and granted the trademark.

Apple’s world domination

Apple sought to replicate the protection afforded by its US registration by extending the trademark internationally. In 2013, the German Patent and Trademark Office refused Apple’s application ruling that the proposed trademark:

• was simply the ‘essential elements’ of Apple’s business; and
• had not established its ‘commercial origin’.

On referral for a preliminary ruling, the Court of Justice of the European Union (CJEU)¹ focused on whether the layout design of Apple stores constituted a sign that was capable of being graphically represented and whether it was capable of distinguishing Apple’s goods and services of from other providers. In July 2014, the Court found that:

1. the store’s layout and floor plans resemble signs that were ‘distinct’ and formed a visual representation of Apple without the need to revert to packaging of the goods; and
2. there was no way to rule out the effect the stores’ layout had in distinguishing Apple’s goods and services to that of its competitors, as it was in marked contrast to other store layouts.

The CJEU confirmed that the design and layout of Apple’s stores could be registered as a three-dimensional trademark.

The case now goes back to the German Patent Court for a decision. In making its decision, the German Court will have to take into account issues such as inherent distinctiveness of Apple’s signature store layout.

The retail landscape

What does this mean for other retailers? While Apple was successful in trademarking its store layout, the process was lengthy and involved considerable wrangling. However, if a retail store’s layout design can show that it makes its services stand out from others, it may be registered as a trademark in the EU. Quite possibly, this may provide a persuasive similar argument in Australia.

This is great news for large-scale retailers, including franchises, who want to keep their brand consistent across different locations. It helps prevent other businesses from copying their iconic store layouts and designs to take advantage of their good reputation.

Much more than a logo

When a company’s brand accounts for a significant part of its valuation (like Apple’s brand, which was recently valued at US$502million², it would understandably go to great lengths to protect its brands and stay ahead of the competition. Apple’s success in obtaining a trademark for its signature store layout demonstrates the expanding scope of trademark protection available to retailers. While we wait for the German Patent Court’s decision, Apple is leading the charge for all retailers to protect the design and layout of their flagship stores.

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[1] Case C-421/13, Apple Inc. v Deutsches Patent and Marketnamt (German Patent and Trade mark Office), 10 July 2014 (CJEU)
[2] Interbrand Best Global Brands 2023 Report