Store design as a trade mark

Czech Republic: A Court of Justice judgment has made it possible to register the design of retail premises as a 3D trade mark

In November 2010, the leading hardware and software company Apple Inc. successfully had a three-dimensional trade mark registered in the U.S. which essentially consisted of a representation of its Flagship Store design. Apple flagship stores are retail premises on which the company’s products are being presented in the form of seminars, and the company asserted that the said representation illustrates a “distinctive design and layout of a retail store”, inherent, among other things, in its particular use of color.

The company went on to seek international protection of its trademark by invoking the Madrid Convention Concerning the International Registration of Marks. However, the German Patent and Trademark Office refused to extend protection also to the territory of Germany.

Apple Inc. did not hesitate to challenge this decision by filing a lawsuit with the Federal Patent Court of Germany (Bundespatentgericht). This court found that the dispute concerned a question of fundamental relevance for the interpretation of trademark law, which is why it turned to the Court of Justice with four referrals for a preliminary ruling.

On 10 July 2014, the Third Chamber of the Court of Justice ultimately ruled that “(…) the representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store, may be registered as a trade mark for services consisting in services relating to those goods but which do not form an integral part of the offer for sale thereof, provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings; and, that registration is not precluded by any of the grounds for refusal set out in that directive [i.e., Directive 2008/95/ES; author’s note]”. Each such case must then be reviewed further in concreto, taking into account the trademark law of the individual member state.

Source: Judgment – 10/07/2014 – Apple (C-421/13); accessible online: [cited as at 15 July 2014]

Eliška Fučíková, Marketing Coordinator


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