by:Hunt & Hunt
The author would like to acknowledge the assistance of Sebastian Virgili, Abogado, Argentina and Calvin Lau, Lawyer, Sydney for their assistance in researching this article.
- Consider registering a facade or fitout as a trade mark if it is distinctive and not minimalist.
- Don't expect that it will protect against mere imitators, however.
- Evidence of confusion is likely to be needed if infringement proceedings are to be successful.
- Consider whether a combination of colours or a more striking look using colour (but not claiming the single colour) will be a more effective and registrable trade mark.
We have all heard of colour trade marks, shapes, sounds and even scents. They have been around in our trade mark law since 1995. While not numerous or necessarily easy to procure,1 they are now practically traditional, as there is a host of other creative filings being driven by innovative advertising trends.2
What are the latest areas where applicants are pushing the boundaries of what we have traditionally considered a trade mark?
THE APPLE STORE AND MICROSOFT STORE TRADE MARKS
When the young Sun King Louis XIV entered the Hall of Mirrors at his newly built Palace of Versailles for the first time in June 1690, he immediately declared that it should be open to the public to enjoy as were the gardens and canals around the palace. Louis was determined that his palace would put his monarchy and France in front in the world style and taste stakes (a position that, at the time, was enjoyed by Italy), and that this message would spread faster if all were welcome, not just courtiers.
Versailles the most famous of all palaces, even in the modern world continues to embody the style and prestige of French culture, truly a remarkable achievement, and the Hall of Mirrors has been much admired and much copied throughout the world.
When you think of temples to technology, the glassy, glossy Apple Stores and their friendly staff with blue T-shirts and handy iPads immediately come to mind. There are hard but touchable surfaces surrounding you on all sides. Is this the modern architecture of happiness? It certainly seems to help move product. Apple and its competitor Microsoft have both gone to some trouble (at least in the United States) to put into words and to register the trade dress of their retail stores.
Images of the respective store layouts from each application are shown in Figs 1 and 2.
Figure 1: Microsoft, filed December 2010, registered October 2011
The Microsoft mark consists of three-dimensional trade dress depicting the interior of a retail store with four curved tabletops at the front and rear side walls, and a rectangular band displaying changing video images on the walls. The matter depicted in the drawing in broken lines is not part of the mark and serves only to show the continuous stream of changing video content on the video band and the position or placement of the mark.
Figure 2: Apple, filed May 2010, registered January 2013
The Apple mark consists of the design and layout of a retail store. The store features a clear glass storefront surrounded by a paneled facade consisting of large rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront. Within the store, rectangular recessed lighting units traverse the length of the store's ceiling. There are cantilevered shelves below recessed display spaces along the side walls, and rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store. There is multi-tiered shelving along the side walls, and an oblong table with stools located at the back of the store, set below video screens flush-mounted on the back wall. The walls, floors, lighting and other fixtures appear in dotted lines and are not claimed as individual features of the mark; however, the placement of the various items is considered to be part of the overall mark.
The path to registration has not come easily for Apple (curiously, since its rival Microsoft was successful in registering the look and feel of its store several years earlier). Apple has 252 retail stores in the US and Microsoft has 71 at the time of writing, but Microsoft in particular is in the middle of a major expansion drive and has been quoted as saying that it intends to have 101 stores worldwide by this time next year.3
However, Microsoft does not appear to have filed any similar applications in Australia and Apple seems to have let its Australian applications lapse without registration.4 Figures 3 and 4 are two examples of current Australian registrations that look a little similar in concept.5
Figure 3: City scene, registered 19 August 2010
The city scene in Fig 3 is registered as a device mark from 19 August 2010 in class 35 for "department store retailing; discount services (retail, wholesale, or sales promotion services); management of a retail enterprise for others; pharmacy retail services; presentation of goods on communication media, for retail purposes; retail services; retailing of goods (by any means)".
Figure 4: Stylised house, registered 12 June 2001
The stylised house device in Fig 4 is registered from 12 June 2001 for "retail services featuring a variety of home appliances, building materials, plumbing supplies, roofing materials, home furnishings and items used in home improvement; retail florist shops; and wedding gift registry services" in class 35 and "design services for building materials, plumbing supplies, roofing materials, home furnishings and landscaping; landscape gardening design for others; consultation services consisting of technical consultation for building materials, plumbing supplies, roofing materials, home furnishings and landscaping" in class 42.
It should be noted, however, that the Apple and Microsoft marks would be considered "shape" marks under our trade mark law, so it is probably not intended that the marks in Figs 3 and 4 operate in quite the same way. None of the currently registered 777 shape marks on the Australian register are for store layouts, though Apple Inc has several shape marks, both pending and registered, for the iPhone, iPod, iPad and even the magnetic iPad cover and its packaging.6
WHY REGISTER THE STORE LAYOUT OR FACADE AS A TRADE MARK?
Over the last two years, we have seen the emergence of lookalike Apple Stores in China in which, in a pirated setting, one can purchase genuine (usually, it seems) Apple merchandise. Whether the customer is supposed to think they are in a genuine Apple Store is less clear.
On the home front, legitimate competitors such as Samsung are setting their stores up to look like Apple Stores. Recently, the Samsung Experience Store in Sydney's George Street (just up the road from Apple's flagship store) even had an iMac set up at the front of the store displaying its wares, perhaps taking the tribute a bit too far.
However, the striking shopfronts of Eagle Boys Pizza and Boost Juice Bars, for example, do not seem to have been applied for as trade marks though, arguably, they would be more effective registrations than the minimalist appearance of the technology stores.
For the minimalist fitout of the Apple Store trade mark to be infringed, both here and in the United States (and, presumably, also in China), it is likely that the copy store would have to be close enough that customers were actually confused as to whether or not they were in an Apple Store.
Perhaps this is just Apple and Microsoft demarking their territory prior to further expansion.
PREVIOUS TRADE DRESS OR GESTALT CLAIMS IN RELATION TO ARCHITECTURE MORE GENERALLY
Another distinctive building, the futuristic Rock and Roll Hall of Fame and Museum in Cleveland, Ohio, went to some lengths to try to prevent a photographer from selling posters of photographs of the Museum building as souvenirs with the name of the Museum on them, as it had registered the design and the name of the building as trade marks.7 The dissenting judge thought that the production of the poster was the equivalent of "going into a store, getting a bottle of Coke, taking a picture of it and putting 'Coke' underneath" it.8
The majority on appeal rejected this argument on a number of grounds, including that they were "not persuaded that the Museum uses its building design as a trade mark".9 The dissenting judge's view that the shape or design of the building was being used as a trade mark, in the same way that the shape of a Coke bottle is used, is more persuasive.
To cast this case in Australian trade mark terms (rather than what we tend to view as the mishmash of trade mark protection and consumer protection that the US Lanham Act represents to us), the real issue of non-infringement here is that the photographer was not using the poster in any trade mark sense with respect to his own business.
The majority referred to the well-known likeness cases involving Babe Ruth and Elvis Presley to support its view and was happy to affirm the findings that not every photograph taken of a famous person will necessarily infringe their trade mark in their own likeness just as, even if they had been persuaded that the Museum was consistently using its building design as a trade mark, not every photograph of it would infringe that trade mark. The majority seemed happier to classify the building as a famous landmark, rather than a trade mark. This analysis is problematic, particularly as the Museum was using images of the planned building on its merchandise even before it was constructed.
As to the Museum's concern that the public would be misled into thinking that the Museum had endorsed or produced the poster, the majority of the court was of the view that, even if the likelihood of consumer confusion were proven, the photographer would be entitled to the defence of fair use in good faith, though the name of the Museum (also a registered trade mark) also appeared on the poster. The majority decision in the Rock and Roll Hall of Fame and Museum case seems to be the right decision, for the wrong reasons.
HOW WOULD THIS CASE HAVE BEEN DECIDED IN AUSTRALIA?
In Australia, this aspect of the Museum's claim would have been decided under s18 of the Australian Consumer Law, which has a much broader application than the Lanham Act particularly as there is no such defence under our law and infringement of s18 can be entirely innocent. However, in our trade dress cases,10 the Australian courts have been unwilling to rush to the conclusion that Australian consumers are easily misled.11 The protection that such a registration would give to the owner of a distinctive fitout (or building, for that matter) is probably what the US courts would term "thin protection". In other words, it would protect against a very close copy being built, but not other uses -- for example, photographs being taken of the Apple Store and sold as souvenirs.
IS THIS THE START OF A TREND?
Who knows? In the United Kingdom and Ireland, the clean modern look of the now 34 "Jamie's Italian" restaurants has reportedly been much copied by its newer competitors. So far, Jamie Oliver Enterprises Ltd has not sought to trade mark the layout or the look and feel of its restaurants in addition to its suite of more traditional word and image marks.
WHAT ABOUT USING COLOUR INSTEAD OF DESIGN FOR YOUR TRADE DRESS?
The Apple registration specifically states that it does not claim a colour as part of the mark. The opposite approach is probably that taken by BP in relation to the colours green and yellow that it uses on the facades of its petrol stations.12 Colour marks are, after shape marks, the second-most-common of the four non-traditional trade marks.13
Figure 5: A typical BP petrol station, as portrayed on its current colour trade mark registration for the colours green and yellow
The BP mark consists of the colours GREEN and YELLOW applied as the predominant colours to the fascias of buildings, petrol pumps, signage boards -- including poster boards, pole signs and price boards -- and spreaders, all used in service station complexes for the sale of the goods and the supply of the services covered by the registration, as exemplified in the representation attached to the application form.
Single colour marks can be difficult to register, as BP discovered when it tried for the single colour green. Combinations of colours are likely to be more successful.
Another brilliant example of a striking and distinctive colour mark for a facade and interior fitout is the Eagle Boys colour trade mark, 14 shown in Fig 6.
Figure 6: Eagle Boys colour trade mark for glowing pink facade and interior
The Eagle Boys mark consists of a pink glow created by a row of pink-coloured lights extending along a fascia of a building, or a pink glow created by pink-coloured lights mounted on the exterior or interior walls of a building within which the specified services are provided, as illustrated in the example depicted in the representations of the mark.
Figure 7: Eagle Boys shopfront
It is also interesting to note that the recent Eagle Boys application for the single colour mark for PMS Magenta in the relevant classes was the subject of an adverse examiner's report and lapsed on 4 April 2013.15
AND WHAT IS HAPPENING WITH VIRTUAL STORES?
Apple's five-year-old online App Store has recently dropped its suit against Amazon for its use of the term "Appstore". The 2011 suit had been based on trade mark violation and false advertising, and the false advertising claim had already been rejected by the judge in January 2013.16 Apple's statement said that "with more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favourite apps", suggesting that the App Store's success made the proceedings unnecessary. The iTunes Store, meanwhile, is still the world's largest music retailer.
1 Cadbury is currently strenuously opposing Nestlé's attempts to trade mark the shape of Kit Kat bars, while pressing for a trade mark monopoly over the deep purple colour of its own Dairy Milk packaging.
2 L Emmett "Registering 'non-traditional' non-traditional trade marks" (2012) 24(7) Australian Intellectual Property Law Bulletin 182.
3 T Warren "Microsoft opening retail stores in China, plans to have 101 locations worldwide in 2014" The Verge 10 July 2013, available at www.theverge.com.
4 Application nos 1401839 and 1401840.
5 Registration nos 1378752 and 878785.
6 Trade mark registration/application nos 1274317, 1366468, 1376956, 1437923, 1442181 and 1554940.
7 Rock and Roll Hall of Fame and Museum, Inc v Gentile Productions (1998) 134 F 3d 749, argued 2 June 1997, decided 20 January 1998.
8 Above, n 7, at .
9 Above, n 7, at .
10 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354;  FCA 606; BC200904981.
11 C Logan "Mars fail to get up in get-up case: Maltesers rolled down the aisle and out of court" (2009) 22(3) Australian Intellectual Property Law Bulletin 46.
12 Above, n 6, no 728555.
13 The numbers of current registrations in each category are shape, 777; colour, 267; sound, 43; and scent, 1.
14 Above, n 6, no 585856.
15 Above, n 6, no 1444665.
16 D Levine "Judge rejects part of Apple App Store suit vs Amazon" Reuters 2 January 2013, available at www.reuters.com.
Disclaimer: The information contained in this e-alert/update is not advice and should not be relied upon as legal advice. Hunt & Hunt recommends that if you have a matter that is legal, or has legal implications, you consult with your legal adviser.