A strict assessment for trademark protection of retail goods or services

Authors: Monika Juskaite, a Trademark Consultant at METIDA, Reda Zaboliene, Managing Partner, Attorney-at-Law, Patent Attorney, European Patent Attorney, European Community Trademark and Design Attorney at METIDA

The European Court of Justice (ECJ) haScreen Shot 2014-09-04 at 14.25.20s confirmed that retail goods or services, for which the trademark protection is granted, must be clearly and precisely defined to avoid any ambiguity and ensure appropriate protection of the trademark.

The issue on the grant of trademark protection for retail services still raises a lot of debate between the countries and the European Commission resulting in controversial opinions. The ECJ has not yet given the exact answer to the question, whether article 2 of Directive 2008/95  can be interpreted as meaning that a  retail trade service bringing together services to give the consumer the opportunity to conveniently compare and purchase them encompasses the concept of a ‘service’.

On 10th July, 2014 the ECJ made decisions in a case Netto Marken-Discount AG & Co. KG vs Deutsches Patent-und Markenamt which discussed how to accurately describe the services associated with the retail trade, and whether the scope of the trademark protection afforded to the retail trade services bringing together other services  can be extended to the services provided by the retailer itself.

On 10th September 2011 Netto Marken-Discount filed an application to register the verbal and visual mark for 18, 25, 35 and 36 classes of goods and services. However, the application was rejected under the grounds that the services indicated in the application could not be distinguished from the other services in terms of their nature and scope.

The ECJ held that the services consisting of activities bringing together services so that the consumer can conveniently compare and purchase them may come within the concept of ‘services’ defined in article 2 of the directive 2008/95. The court also noted that the applicant’s application should not be rejected on the grounds that the range of services offered to the consumer may include the services provided by the applicant themselves.

The Directive 2008/95 must be interpreted in a way that the competent authorities must clearly and precisely know what goods or services are covered by the trademark in order to be able to carry out their duties in relation to the early examination of the trademark application and an appropriate and accurate publishing and monitoring of the trademark register. The economic operators must be aware of existing or potential competitors’ trademarks as well as filed trademark applications in order to get  the relevant information on the rights of the third parties.

The ECJ interpretation implies that the applicant has a duty to clearly and precisely identify the goods or services for which the trademark protection is sought. Additionally, the ECJ notes that the implementation of this requirement does not oblige the person who files a trademark application for services bringing together services to specifically define each service separately.

Trademark applicants should note that if the  information in the trademark application cannot allow the competent authorities and economic operators identify which services the applicant intends to bring together, the applicant may be asked to revise the application indicating specifically what services they are going to include.

This ECJ decision should not be considered as a surprise. The ECJ made a similar decision in a Praktiker Bau-und Heimwerkermärkte case which also pointed out that the Directive 2008/95/ should be interpreted broadly and should include  the  trademarks  afforded to retail, wholesale and postal services

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