Member Article

It’s been well reported that Apple has managed to get a US trade mark registration for the layout or interior design (the look, if you like) of the Apple store. What this means is that Apple has exclusive rights to this layout - or indeed any confusingly similar layout - in the area of stores selling electronic goods. A diagram forms part of the registration and there is apparently a description which explains that the layout comprises various things, including ‘a clear glass storefront surrounded by a panelled façade... rectangular recessed lighting units within the store... cantilevered shelves below the recessed display spaces...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... multi-tiered shelving along the sidewalls... an oblong table with stools located at the back of the store, set below video screens flush mounted on the back wall.’

Some say that Apple’s motivation for getting this registration was to deal with copycat stores in its largest market, China.  Although the registration only covers the USA, there are apparently plans to seek registrations in various other countries on the basis of the US registration. Others say that Apple is concerned about the fact that Microsoft stores look similar to Apple stores. Whatever the reason, it’s not hard to understand why Apple would want a registration like this.

But it was the very fact that Apple was able to get a registration of this nature that surprised many people.  But is it really that radical - if something like a colour or a shape can function as a trade mark for goods, isn’t it possible that the appearance of a store or other business premises can act as the trade mark of a business that offers services? And if shapes and colours can be registered as trade marks (it’s difficult but it happens occasionally), why not store layouts? 

The term ‘trade dress’ is sometimes used to describe something as nebulous as a  store layout.  Trade dress is specifically recognised in US trade mark law and it is possible to get a registration for it, although it very likely that you will need to prove that the layout has been used for a considerable period of time, and that it  has therefore become distinctive of your business – indeed in the case of Apple, the authorities were not prepared to accept that the layout was inherently distinctive, but they did accept that it had become distinctive as the trade mark of Apple as a result of use going back to 2006. In 1992 the US Supreme Court heard a case involving trade dress and it held that a restaurant chain, Two Pesos, could successfully enforce its trade dress registration against a competitor. In that case,  the layout was described as follows:  ‘A festive eating atmosphere... decorated with artefacts, bright colours, paintings and murals... exterior is a festive and vivid colour scheme using top border paint and neon stripes... bright awnings and umbrellas continue this theme.’ 

So the situation in the USA appears to be that trade dress can be registered as a trade mark if it is distinctive - inherently as it was in the Two Pesos case, or   through use as it was in the case of Apple - and provided that it is primarily non-functional.  But does the same situation apply in South Africa? It is important to note that US trade mark law is different from ours, and that the US Supreme Court did once say in a case that dealt with the registration of a single colour for goods (Qualitex) that a trade mark can be  ‘almost anything at all that is capable of carrying meaning.’   But the definition of   a ‘mark’ in the South African Trade Marks Act is also very wide: ‘Any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforesaid.’  And, although we do follow the approach of the European courts - which is to say that a mark cannot be registered unless the graphic representation is clear, precise, intelligible, and durable - a layout could surely be represented with some precision by way of diagrams and a written description!

 Even without a trade mark registration, it might still be possible to stop a competitor from using a similar trade dress through the common law remedy of passing-off. What you would need to do is show that your trade dress had acquired such a reputation that the use of a similar trade dress would lead to confusion. In effect, you might have to convince a court that if an ordinary customer were to walk into your competitor’s store without paying attention, they might think they were in your store.   But the cases don’t bode well. There was a case in the USA where a company called Happy’s Pizza Franchise unsuccessfully tried to stop a competitor called Papa’s Pizza from using a similar trade dress on the basis of its common law or unregistered rights. The court held that the trade dress was generic. There was a case in the UK, Jimmy Nicks, where a claim relating to a bar with a football stadium theme failed. And in South Africa we had the case of Spur Restaurants v Saddles Restaurants, where an unlawful competition claim failed because the court felt that the layout had not been sufficiently clearly defined. 

Trade dress is something that you can perhaps protect and enforce in South Africa. But, as with all other types of trade marks, the more distinctive (interesting and original) your trade dress is, the better your chances will be. 

GAELYN SCOTT: Director in & Head of ENS’ IP Department ([email protected])