Non-Conventional Trademarks

Non-conventional trademarks offer a way to protect the look and feel of a brand.

Although individual components of a brand, such as its colour can be difficult to protect, something I will discuss in a follow up post in the future, it may be easier to secure other types of protection than the conventional logo mark – protections that go a long way towards maintaining the uniqueness of the look and feel of your brand.

An interesting example of a non-conventional trademark is the protection Apple secured over the ‘layouts’ of its stores.

Here is what Apple trademarked at the USPTO.

https://tsdr.uspto.gov/#caseNumber=85036990&caseType=SERIAL_NO&searchType=statusSearch

The registration covered “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto”.

Having secured this trademark, Apple then sought to extend its protection internationally.

Trademarking in Germany

However, it hit a problem in Germany when Germany refused to grant protection on the grounds that consumers would not regard the sign as a trademark in the sense of indicating trade origin: the depiction of the space devoted to the sale of Apple’s goods was nothing more than a representation of an essential aspect of Apple’s business.

Apple appealed, and the decision was referred to the Court of Justice of the European Union (CJEU).

The Decision of the CJEU

In a groundbreaking decision, the CJEU held that the representation of the store layout was capable of distinguishing the goods or services of Apple’s business from those of other undertakings. In this context it was relevant whether the depicted layout departed significantly from the norm or customs of the economic sector concerned.

Whether a design representing the layout of a retail store is distinctive enough to be registrable has to be assessed by reference to the goods or services in question and with regard to the perception of the public.

The assessment criteria that the IP offices need to apply are the same as those used for other types of signs.  Applications should always be assessed on a case-by-case basis to decide whether the sign being applied for is descriptive or should be refused on any other grounds.

As regards to the inclusion of services, the court found that a sign representing the layout of the flagship stores of a manufacturer of goods may lawfully be registered also for services so long as they do not form an integral part of the offer for sale of those goods:

“Certain services, such as those referred to in Apple’s application and clarified by Apple during the hearing, which consist of carrying out, in such stores, demonstrations by means of seminars of the products that are displayed there, can themselves constitute remunerated services falling within the concept of ‘service.” (at para 26)

Conclusion

It follows that any commercial establishment, such as a restaurant, with distinctive layouts which are not solely functional, can take advantage of trademarks. It’s particularly, useful for consumer businesses operating through a franchise model to consider how to create distinctive, unique designs as part of their brand, and secure trademark protection to obviate the cost and expense of a passing off action against copycats.

If you want to protect the interior distinct arrangement of your internal layout, I recommend involving an experienced trademark lawyer during the design phase. Experienced lawyers can add much more value than simply clearing a trademark or registering one. They tend to get a good feel for what is protectable and distinctive through their work in registering trademarks, so by involving them in the creation stage you are more likely to choose names, logos, or other design that are sufficiently distinctive to be worth using. When you first create something, such as a name or logo, and then turn to a lawyer to protect it for you, you don’t get the lawyer’s input as to whether the choice was a good one or not. As such the risk of increased costs of protection will be much higher.

Non-conventional trademarks, in particular, need to be considered on a case by case basis, and therefore, it makes sense to involve a lawyer during the creation stage.