The European Court of Justice (ECJ) has ruled that a service allowing consumers to compare and buy services conveniently could fall within the concept of services under Article 2 of the Trade Marks Directive (2008/95/EC) (2008 Directive) (Article 2).
Class 35 of the International (Nice) Classification of Goods and Services for the purposes of the Registration of Marks (Nice Classification) covers the following services: Advertising; business management; business administration; office functions (class 35). Under German law, goods and services must be identified as belonging to a particular Nice Classification class.
If a trade mark applicant refers to the entire heading of a class, he must specify whether he was referring to all of the goods or services included in the alphabetical list of that class: if not, he must specify which goods or services he intends to be covered (Chartered Institute of Patent Attorneys C 307/10 EU:C:2012:361) (CIPA).
In Praktiker Bau- und Heimwerkermärkte, the ECJ held that “services” under the 2008 Directive could include services provided in connection with retail trade of goods; for example, services providing an assortment of goods offered for sale, and services aimed at inducing consumers to buy from the trader instead of a competitor (www.practicallaw.com/1-201-0681).
N applied to register in Germany a word and figurative sign “Netto Marken-Discount” for goods and services, including in class 35: “services in the retail and wholesale trade, particularly the bringing together, for the benefit of others, of a variety of services enabling customers conveniently to purchase those services, particularly services provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example websites or television shopping programmes”.
The application was rejected on the ground that the class 35 services set out in the application could not be clearly distinguished from other services in either their substance or scope. N appealed.
The German Federal Court referred questions to the ECJ.
The ECJ held that services that consist of bringing together services so that consumers can conveniently compare and buy them may fall within the Article 2 concept of “services”. It also held that N’s application could not be rejected on the sole ground that the assortment of services that it intended to provide to consumers could include its own services.
The 2008 Directive must be interpreted as requiring N’s application to be sufficiently clear and precise that the competent authorities and other economic operators know which services N intends to bring together. Here, the details provided by N were sufficient to allow the competent authorities and economic operators to understand that the application was made for a service that consisted of selecting and offering an assortment of services so that consumers could choose between them from a single point of contact.
However, it was also necessary to identify the services brought together with sufficient clarity and precision. N identified these services under classes 35, 36, 39, 41 and 45 of the Nice Classification and through descriptions; for example, “entertainment” or“personal and social services intended to meet the needs of individuals”. The German Federal Court would have to assess whether this actually satisfied the necessary requirements of clarity and precision.
N’s application, which cited the entire class 35 heading, did not specify whether it sought protection for the bringing together of all or only some of the services included in the alphabetical list of that class35. Although this was for the German Federal Court to decide, an application that did not make it possible to establish whether, by using a particular Nice Classification class heading, the applicant intended to cover all or only some of the goods or services could not be considered sufficiently clear and precise.
This decision suggests that a trade mark may be obtained for “retail trade“ in services, where a trader selects and offers and assortmenr of third-party services so that consumers can choose among those services from a single point of contact.
The decision leaves open the possibility that the trade mark applicant may apply to register the sign for bringing together not only third party services, but also services offered by itself. However, the key will be to identify with sufficient clarity and precision the services brought together, and in particular to specify whether, by citing a class heading, protection is sought for the bringing together of all the services included in the alphabetical list of that class or only of some of those services.
Case: Netto Marken Discount v Deutsches Patent- und Markenamt C-420/13.
First published in the September 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.