ECJ: the bringing together of services can be a 'service'

In Netto Marken-Discount AG & Co KG v Deutsches Patent- und Markenamt (Case C-420/13, July 10 2014), a reference for a preliminary ruling by the German Federal Patent Court, the Court of Justice for the European Union (ECJ) has confirmed that retail services may be rendered not only for goods, but also for services.

Netto Marken-Discount AG & Co KG filed a German application for the word and device mark NETTO MARKEN-DISCOUNT in respect of several services in Class 35 of the Nice Classification, namely:

"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, in relation to the following services: in Class 35: advertising; business management; business administration; office functions; in Class 36: issue of vouchers or tokens of value; in Class 39: travel arrangements; in Class 41: entertainment; in Class 45: personal and social services intended to meet the needs of individuals."

The German Patent and Trademark Office rejected the application as the examiner was of the opinion that the description of these services was not sufficiently clear, and Netto refused to make any further amendments.

Netto appealed to the Federal Patent Court, which decided to stay the proceedings and refer questions to the ECJ for a preliminary ruling. The court sought to ascertain:

1. whether Article 2 of the Trademarks Directive (2008/95/EC) must be interpreted as meaning that a 'service' within the meaning of this provision also encompasses retail trade in services;
2. in the affirmative, whether these services must be specified in as much detail as the goods marketed by a retailer; and
3. whether the scope of trademark protection afforded to retail services extends to services provided by the retailer itself.

With respect to the first question, the ECJ referred to its decision in Praktiker Bau- und Heimwerkermarkt (Case C-418/02), in which it was held that services provided in connection with retail trade of goods can constitute services in the sense of Article 2 of the directive. The ECJ stated that the specific services claimed by Netto in relation to its retail store services could also be offered by others and, therefore, constituted admissible services within the meaning of Article 2. Further, it did not make any difference that Netto might offer these services itself.

With respect to the second question, the German Federal Patent Court wanted to know whether the description used by Netto in its application was sufficient, or whether a more specific wording was necessary. Unsurprisingly, the ECJ simply referred to its decision in IP TRANSLATOR (Case C-307/10), stating that:

• the competent authorities must know with sufficient clarity and precision the goods and services covered by a mark in order to be able to fulfil their obligations in relation to the prior examination of applications; and
• economic operators must be able to acquaint themselves with clarity and precision with registrations or applications for registration made by their actual or potential competitors.

Hence, Netto had to identify the services for which registration was sought with sufficient clarity and precision. In line with IP TRANSLATOR, the ECJ clarified that it was not necessary for Netto to enumerate all the specific activities making up its retail store service. In some instances, the general indications in the class headings might be sufficient, while in other instances, the class headings are so broad that they need further clarification. The ECJ clearly stated that it is up the national offices to examine whether the description is sufficiently precise and clear. The ECJ further stated that, where an applicant uses an entire class heading, it should specify whether it seeks protection for all the goods and services in the alphabetic list, or whether it would like to limit the application to specific goods and services in the alphabetic list.

With respect to the third question, the Federal Patent Court wanted to ascertain the scope of protection of the resulting registration. The ECJ correctly stated that this question was not the subject of the original dispute, which dealt with the requirements for the registration of a mark and not with its scope of protection. Therefore, the third question was not admissible.

This decision of the ECJ does not come as a surprise. Similar to the decision in Praktiker Bau- und Heimwerkermarkt with regard to retail services in respect of goods, the ECJ again shows that the directive should be interpreted broadly to allow the registration of retail store services, mail order services or wholesale services. On the other hand, the ECJ confirmed the decision in IP TRANSLATOR by stating that the list of goods and services must be sufficiently clear and precise, so that the use of class headings may be correct with respect to some terms, but may require further clarification with respect to other terms.

Following this preliminary ruling, it can be expected that Netto's application will proceed to registration in respect of retail trade in services. However, as some of the class headings in Classes 35, 36, 39, 41 and 45 could be too vague, Netto might have to clarify its list of services in the course of the further proceedings.

Carsten Albrecht, FPS Fritze Wicke Seelig, Hamburg