No protection for retail services without further detail

European Union

Advocate General Léger has issued an opinion in the Praktiker Bau- und Heimwerkermärkte AG Case clarifying the principles that apply to the registration of marks for retail services. Léger stated that such marks are eligible for registration but the services have to be specified in detail and the goods in respect of which the services are carried out have to be indicated. Mere use of the terms 'retailing' or 'retail services' in an application is not sufficient to confer protection.

Praktiker Bau- und Heimwerkermärkte AG applied for registration in Germany of the device mark PRAKTIKER for "retailing in construction, DIY [do-it-yourself], garden articles and other consumer goods in the field of DIY" in Class 35 of the Nice Classification. The case came before the twenty-fourth division of the German Federal Patent Court, which referred the following questions to the European Court of Justice (ECJ):

  • Does retail trading constitute a service within the meaning of Article 2 of the Community Trademark Directive?

  • If so, to what extent must the content of such services be specifically stated?

  • To what extent is it necessary to define the scope of similarity between those services and the other services provided in connection with the sale of goods, or the goods sold?

In his preliminary opinion, Léger stated that the relationship between retail trading enterprises and their customers, influenced by and built on the sales service itself, can be a reason for purchasing that is of similar importance to the price or the quality of the goods. Therefore, retail services that are identifiable and distinct from the sale itself must be eligible for registration.

Léger, however, did not favour the practice of the Office for Harmonization in the Internal Market (OHIM), (see Communication 3/01 of the president), which accepts the term 'retail service' as a specification. Instead, by referring to the ECJ's ruling in the Sieckmann Case (see Für Elise decision creates a new sound in trademark law), Léger suggested that the services rendered in connection with the retailing of goods have to be specified in a way that clarifies the exact form of these services. The wording in the explanatory note to Class 35 of the Nice Classification is not sufficiently precise. Furthermore, taking into consideration the view of the OHIM Board of Appeal expressed in the Giacomelli Case, according to which a reference to the field of activity connected to the retail services is necessary, Léger opined that the specification must indicate the goods or the nature of the goods in respect of which the service is carried out.

As regards the third question, Léger held that it is not necessary to define the scope of similarity between retail services and the goods sold since, as a rule, there would not be any risk of confusion if the specification of retail services is properly made in the way he suggested.

Léger's opinions, as already seen in Libertel and Heidelberger Bauchemie (see Single-colour registration not possible, says advocate general and ECJ urged to overturn Libertel), create the impression that he is rather reluctant to break new ground in relation to trademark protection. Taking into account the needs of modern business and the principles of classification applied by the OHIM and a number of national trademark offices, it would be preferable if the ECJ were to disregard his opinion and allow registrations for retail services.

Matthias Sonntag, Gleiss Lutz, Stuttgart

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