Rundschreiben |  2006 

July 2006

A) History

Until the late 1990s, in European trademark law and the national law in most European countries, a protection for "retail services" in international class 35 had not been possible at all. This was contrary, e.g., to U.S practice where, since 1958, these services have been allowed in wordings like: "retail department stores; retail grocery stores", or later: "retail outlets featuring {indicate specific type or field}; on-line retail store services featuring {indicate field or type of goods}".

In 1999, the 2^nd Board of the Community Trademark Office, OHIM, allowed the trademark "Giacomelli Sport" for "retail services" with the description given by the 7th Edition of the Nice Classification ("the bringing together...") requiring, however, that the field of activity be indicated. In his communication of March 2001, the President of OHIM held that a reference to the field of activity was not a legal necessity, similar to services such as "repair" or "maintenance", or "transportation", where an indication of the field of activity was not required.

The developments at OHIM accelerated an ongoing discussion within the European states and led to different approaches in the national Offices, some of which followed OHIM by allowing "retail services" (like UK, Denmark, Benelux, Finland, Sweden), others maintained their strict refusal (like Germany, France, Greece). European countries therefore were far away from harmonization on this point!

B) The "Praktiker" decision by the European Court of Justice, ECJ

The German Patent and Trademark Office, GPTO, rejected the applic­ation "Praktiker" for "retail trade in building, home improve­ment, gardening and other consumer goods for the do-it-yourself sector". In the appeal proceedings, wishing to receive a common guideline for handling "retail services" in trademark applications in Europe, the German Federal Patents Court referred questions to the ECJ for a preliminary ruling which may be summarized as follows:

Are "retail services" admissible at all?
If yes:
Must there be a further precision?
What about the scope of protection in case of a conflict? What about the similarity with other services and the similarity between retail services and the goods sold by that retailer?

In July 2005, the ECJ rendered the long-awaited decision by stating that, yes, "retail services" are generally allowable, however, a precision as to the goods or types of goods to which the retail services relate must be included in the wording, a detailed specification of the retail services in question is not needed. The ECJ did not give any answer to the issue of scope of protection since this question was considered to be a hypothetical one which did not relate to the facts of the main proceedings before the Federal Patents Court, i.e. to decide whether "retail services" as such could be register­ed or not.

A) Present situation and open topics

Specification

The ECJ's requirement to include an indication of the goods or types of goods is now followed by the Offices in Europe, however, concerning the exact specification, different ways of handling the precise wording have come up:

While the GPTO finds it sufficiently precise to list the relevant classes of goods of the Nice classification (e.g., "retail services with goods in classes 3 and 25"), other Offices have a different approach. OHIM requires either the mentioning of the goods themselves or of the group of relevant goods (e.g., "retail services in the fields of clothing and cosmetics"). The UK Patent Office dropped its requirement to specify the precise nature of the retail services being provided and now requires to specify (in words and not in class numbers) the goods or types of goods. Also, e.g., the Swedish and the Danish Patent Offices follow the requirement to verbally express the goods or types of goods.

Therefore, already the specification of the services, even if based on the same ECJ ruling, is different throughout Europe, and a further harmonization would be desirable.

Similarity and risk of confusion

As stated above, the scope of protection of retail service marks with regard to conflicting goods and services has remained unanswered by the ECJ decision. However, it should be noted that in his Opinion preceeding the decision, the Advocate General had opined that "the risk of confusion between retail services and products, if it cannot be excluded, is nevertheless improbable except in particular circumstances, for example when the respective marks are identical or almost identical and well established on the market".

Unless this point is clarified by a further ECJ decision, the Advocate General's Opinion may be of some guidance: i.e., there may be some chance of establishing a risk of confusion if the goods covered by one mark and the retail services of the other mark are directed to the same goods, if the marks in question are identical (or virtually identical), and if the earlier mark has at least a normal degree of distinctive character.

The UK Patent Office has already adapted its search practice to this Opinion.

In its invalidity decision (already of June 2004), OHIM took a similar approach declaring invalid the CTM registration "O STORE" as far as "retail and wholesale services, including on-line retail store services; retail and wholesale of clothing, headwear, footwear, athletic bags, backpacks and knapsacks, and wallets" were concerned on the basis of the prior French trademark "THE O STORE" registered for a broad range of goods in classes 18 and 25. A central argument of OHIM concerning the similarity of services/goods was that the goods in this case have, or may have, the same distribution channels and, hence, will or can coincide in the sales outlets.

Use

This will be another hot topic in the future since "retail services" do not include the mere selling of goods, but especially relate to services which influence the customer to purchase goods at a certain retailer, be it by the retailer choosing the goods to be sold, by displaying them in a certain way and/or by additional services which attract the consumer to a certain shop. What will therefore be the required use? In case the tradename of the company is identical with its retail service mark, will there be a difference in proving the use of the tradename and the trademark use requirements? Will the use of the retail service mark also cover use of such mark for the goods or types of goods themselves?

In a recent decision ("OTTO" decision), the German Federal Court of Justice, BGH, ordered the cancellation of national trademarks which were only used as tradenames or retail service marks (e.g., on the most distributed mail-order catalog in Germany) but not on or for the goods themselves, without, however, taking into account that when the now cancelled trademarks were filed no retail service marks were available and trademark protection could only be achieved by protecting the mark for the goods concerned. A further recent decision of the BGH ("NORMA" decision, with the participation of BETTEN & RESCH) went into the same direction: the proof of use of the prior trademark "NORMA" (one of the biggest German discount supermarket chains which widely uses the mark in publicitary material, outside and inside the many shops, e.g. on the shop windows, on the shelves, on its shopping bags, etc.) for the goods in question was held insufficient since the goods were marked with the retailer's private labels but not with the retailer's name. However, unfortunately, in neither case the BGH referred for a preliminary ruling to the ECJ.

Conclusion

Even if "retail services" are now allowed for registration within the European Union, there are still many questions to be resolved in this regard and further harmonization needs to be achieved.

BETTEN & RESCH is closely following the developments and would be pleased to assist you in all trademark cases and, especially, to answer the questions you may have.

 

© BETTEN & RESCH 2006

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