Apple Inc. v Deutsches Patent- und Markenamt.
Date: 2014-07-10
17. It should be recalled at the outset that, in order to be capable of constituting a trade mark for the purposes of Article 2 of Directive 2008/95, the subject-matter of any application for registration must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of graphic representation. Thirdly, the sign must be capable of distinguishing the ‘goods’ or ‘services’ of one undertaking from those of other undertakings (see, as regards Article 2 of Directive 89/104, Libertel , C‑104/01, EU:C:2003:244, paragraph 23; Heidelberger Bauchemie , C‑49/02, EU:C:2004:384, paragraph 22; and, Dyson , C‑321/03, EU:C:2007:51, paragraph 28).
20. 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 referred to at paragraph 17 of this judgment. In that regard, it suffices to observe that it cannot be ruled out that the layout of a retail outlet depicted by such a sign may allow the products or the services for which registration is sought to be identified as originating from a particular undertaking. As the French Government and the Commission have submitted, this could be the case when the depicted layout departs significantly from the norm or customs of the economic sector concerned (see, by analogy, as to signs consisting of the appearance of the product itself, Storck v OHIM , C‑25/05 P, EU:C:2006:422, paragraph 28, and Vuitton Malletier v OHIM , C‑97/12 P, EU:C:2014:324, paragraph 52).
21. The fact that a sign is, in general, capable of constituting a trade mark within the meaning of Article 2 of Directive 2008/95 does not mean, however, that the sign necessarily has a distinctive character for the purposes of Article 3(1)(b) of the directive in relation to the products or services for which registration is sought (see, in relation to Articles 4 and 7 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), the content of which corresponds with that of Articles 2 and 3 of Directive 2008/95, Henkel v OHIM , C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 32, and OHIM v BORCO-Marken-Import Matthiesen , C‑265/09 P, EU:C:2010:508, paragraph 29).
22. The distinctive character of the sign must be assessed in concreto by reference to, first, the goods or services in question and, second, the perception of the relevant public, namely the average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see, in particular, Linde and Others , C‑53/01 to C‑55/01, EU:C:2003:206, paragraph 41; Koninklijke KPN Nederland , C‑363/99, EU:C:2004:86, paragraph 34; and OHIM v BORCO-Marken-Import Matthiesen , EU:C:2010:508, paragraphs 32 and 35).
23. It is also by an assessment in concreto  that the competent authority must determine whether or not the sign is descriptive of the characteristics of the goods or services concerned within the meaning of Article 3(1)(c) of Directive 2008/95 or gives rise to any other ground listed also in Article 3 for the refusal of registration ( Koninklijke KPN Nederland , EU:C:2004:86, paragraphs 31 and 32).
24. With the exception of Article 3(1)(e) of the directive, which exclusively covers signs for which registration is sought consisting of the shape of the goods and is thus irrelevant for the resolution of the dispute in the main proceedings, the provisions of Article 3(1), such as subparagraphs (b) and (c), make no explicit distinction between different categories of trade mark (see to that effect, Linde and Others , EU:C:2003:206, paragraphs 42 and 43). It follows that the assessment criteria that must be used by the competent authority when it applies the latter provisions to signs consisting of a design depicting the layout of a retail store do not differ from those used for other types of sign.
25. Finally, as regards the question, which is also critical for the resolution of the dispute in the main proceedings and which was debated at the hearing in response to a question inviting an oral response which was posed by the Court, namely whether services intended to induce the consumer to purchase the products of the applicant for registration can constitute ‘services’ within the meaning of Article 2 of Directive 2008/95 for which a sign, such as that at issue in the main proceedings, may be registered as a trade mark, Apple submits that such is the case and refers to the distinction that the Court has already made between the sale of goods, on the one hand, and services, falling within the concept of ‘service’, intended to induce that sale, on the other hand ( Praktiker Bau- und Heimwerkermärkte , C‑418/02, EU:C:2005:425, paragraphs 34 and 35). By contrast, the Commission considers that this case-law cannot be transposed to a situation, such as that arising in the main proceedings, in which the sole objective of those services is to induce the consumer to purchase the products of the applicant for trade mark registration itself.
30. Consequently, in view of the Court’s settled case-law, according to which a request for a preliminary ruling from a national court must be rejected where it appears to be quite obvious that the interpretation of Union law sought bears no relation to the facts or purpose of the main proceedings (see, inter alia, Cipolla and Others , C‑94/04 and C‑202/04, EU:C:2006:758, paragraph 25, and Jakubowska , C‑225/09, EU:C:2010:729, paragraph 28), the fourth question must be declared inadmissible.
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