The CJEU has recently ruled that a retailer's activity of bringing different services together does qualify as a service for which a trade mark can be registered. In coming to its decision, the CJEU provided useful guidance regarding the level of detail required in such applications.
The applicant, Netto Marken-Discount AG & Co. KG, had applied to register a device mark in several classes including the following services in class 35 "Services in the retail and wholesale trade, particularly the bringing together, for the benefit of others, of a variety of services…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 arrangement; in Class 41: Entertainment; in Class 45: Personal and social services intended to meet the needs of individuals"
The application was rejected by the German Trade Mark and Patent Office on the basis that the class 35 services applied for could not be clearly distinguished from other services in either their substance or scope. On appeal the Federal Patent Court (Bundespatentgericht) referred the following questions to the CJEU:
- Is the activity of bringing services together a service in itself?
- If so, does the trade mark application have to specify (a) the service offered by the retailer in bringing services together and (b) the services that are brought together?
The CJEU held firstly that the activity of bringing together a variety of services enabling customers conveniently to purchase those services is in itself a service, and this is so even where the services brought together also include services provided by the trade mark applicant itself, in this case Netto.
The CJEU then went on to consider whether the specification must identify specifically and precisely both (1) the services rendered which constitute the bringing together service and (2) the services brought together.
In terms of (1), the CJEU held it is not necessary to specify in detail each of the activities making up the "bringing together" service. On the facts of the case, the specification submitted by Netto, namely "the bringing together, for the benefit of others, of a variety of services enabling customers conveniently to purchase those services, especially services provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example websites or television shopping programmes', allows the competent authorities and economic operators to understand that the application is made in respect of a service which consists in selecting and offering an assortment of services so that the consumer can choose between them from a single point of contact.
However, with regard to (2), the CJEU stated it is necessary for a specification to identify the services bring brought together with sufficient clarity and precision. The CJEU identified that in the absence of such a sufficiently clear and precise identification of the services which the applicant intends to select and offer to the consumer, it could in particular be difficult, if not impossible, for the competent authorities to carry out a full examination of the application, including assessing if the mark in question is descriptive of one or more of the services to be selected and offered.
Furthermore, the CJEU observed that a number of the general indications in the Nice class headings cover goods and services that are so variable that they are not capable of satisfying the requirement of clarity and precision, although it was for the national authorities to determine whether certain terms were sufficiently clear and precise. In addition, where an application uses all the general indications (and therefore the entire heading) of a particular class, it is necessary to specify whether all or only some of those goods and services are intended to be covered.
On the facts of the case, the description of the services being brought together included the class 35 general indications "advertising; business management; business administration; office functions". Although it is ultimately for the national court to determine, the CJEU observed that this does not ostensibly specify whether, by citing the entire class 35 heading, all or just some of the services within class 35 were intended to be covered, and is therefore not clear or precise.
The full judgment can be accessed here
Case C-420/13 Netto Marken-Discount AG & Co. KG v Deutsches Patent- und Markenamt