ECJ to rule on registrability of retail services

European Union

The European Court of Justice (ECJ) is set to rule on whether retail services may be registered as trademarks under the Community Trademark Directive and, if so, under what conditions. The ECJ's ruling is expected to provide much needed guidance to both national trademark offices and the Office for Harmonization in the Internal Market (OHIM).

The issue was put to the ECJ when the German Patent and Trademark Office (PTO), in Einzelhandelsdienstleistungen (24 W (pat) 214/01), rejected an application to register the word 'Praktiker' (practitioner) for the retailing of construction, home-improvement and garden articles. The PTO reasoned that retail services are merely ancillary to the sale of products and do not constitute an independent service. The applicant appealed.

The Patent Court found that the applicant must specify the goods to which the retail services apply in order for these services to be eligible for registration. The court reasoned that protecting all the goods sold by a particular retailer without discrimination would contradict the requirement that a trademark apply to specified goods or services. However, the court stayed the proceedings and sought clarification from the ECJ as to the interpretation of the EU directive - on which German law is based - on whether retail services may be registered as trademarks.

The ECJ's decision, which is not expected until the end of the year, will give welcome guidance to the OHIM, and national trademark offices and courts, which have thus far issued inconsistent decisions on this matter.

Florian Schwab, Boehmert & Boehmert, Munich

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