Trade Mark Applications - Retailing or 'Bringing Together' of Services

For a number of years the position has not been precise as to whether protection by a trade mark may be obtained with respect to retail trade in services as opposed to retail trade in goods. Following the decision of the Court of Justice of the European Union ("CJEU") in Case C- 420/13 Netto Marken-Discount AG & Co. KG v Deutsches Patent- und Markenamt ("Netto Marken"), the UK Intellectual Property Office ("IPO") has issued Practice Amendment Notice 1/15 clarifying the position.

Decision

Netto Marken had filed a trade mark application in Class 35 to the "German Patent and Trade Mark Office" which read:

"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…, in relation to the following services…"

This was dismissed at the registry but on appeal to the CJEU it was "confirmed that the retailing of services is, in principle, a commercial activity which can be protected by a trade mark registration."

IPO Practice Amendment Notice 1/15

The Notice seeks to update the classification practice accordingly and the IPO will accept claims to the bringing together of almost any service, in that the claim must meet the requirements for clarity and precision.

The following are example specifications will be considered acceptable:

The bringing together, for the benefit of others, of a variety of legal services, enabling customers to conveniently view and purchase those services.
The bringing together, for the benefit of others, of slimming club services, video-on- demand services, and detective agency services, enabling customers to conveniently view and purchase those services.
The bringing together, for the benefit of others, of a variety of broadcasting services, enabling customers to conveniently view and purchase those services.

Conclusion

This may be seen as a progressive development in an attempt to redress the margins in trade mark protection in the European Union.