Netto Marken-Discount AG & Co. KG requested registration in Germany of the following mark
Click here to view mark.
for goods and services in class 18, 25, 35, 36. As regards class 35, the specification was as follows:
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 arrangement; 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 regards class 35 because of an allegedly lacking proper demarcation between the services requested and other services. The Federal Patent Court, to whim Netto appealed, considered that basic issues of service mark protection were raised by the appeal and referred the following questions to the Court of Justice:
- (1) Is Article 2 Trademark Directive to be interpreted as meaning that a service within the meaning of this provision also encompasses retail trade in services?
- (2) If the answer to the first question is in the affirmative: Is Article 2 Trademark Directive to be interpreted as meaning that the content of the services offered by the retailer must be specified in as much detail as the goods that a retailer markets?
- Does it suffice for the purposes of specification of the services if
- just the field of services in general or general heading,
- just the class(es) or
- each specific individual service is indicated?
- Do these indications then take part in determining the date of filing or is it possible, where general headings or classes are stated, to make substitutions or additions?
- Does it suffice for the purposes of specification of the services if
- If the answer to the first question is in the affirmative: Is Article 2 Trademark Directive to be interpreted as meaning that the scope of trademark protection afforded to retail services extends even to services provided by the retailer itself?
As regards the first question, the Court has no difficulty in finding that the service of bringing together third-party services for clients may constitute itself a service within the general terms of class 35. The Court applies the principles developed with regard to “retail services” for goods in Case C-418/02 (the so-called PRAKTIKER case) where it held:
The concept of ‘services’ referred to by First Council Directive 89/104/EEC of December 21, 1988 to approximate the laws of the Member States relating to trademarks, in particular in Article 2, covers services provided in connection with retail trade in goods.
As regards the second question, it is no surprise that the Court did not go into details but limited its findings to the requirement of sufficient clarity and precision, as established in Case C-307/10 (the so-called IP TRANSLATOR case), leaving it to the competent authority to make the required determinations. The Court indicated that the list supplied by Netto when referring to class headings may not comply with that requirement.
As regards the third question, the Court recognises that this is an entirely hypothetical question as the only issue before the referring court is the question of registrability, and the “scope of protection” is not in issue.
The Court recognises the relevance of the underlying issue, namely whether a service mark for bringing together services may also be granted when these services are the applicant’s own services. The Court appears to take the view, although this is not entirely clear, that assembling the applicant’s own services may not a service within the meaning of class 35. The Court concludes however that the mere possibility that the services could be the applicant’s own services does not suffice for the rejection:
 However, even though the assortment of services offered by Netto Marken Discount could include services provided by itself, that in no way casts doubt on the fact that the supply described in its application for registration, by means of the words ‘the bringing together, for the benefit of others, of a variety of services enabling customers conveniently to purchase those services’, is capable of being categorised, for the reasons set out in paragraphs 34 to 37 of this judgment, as a service. At the risk of depriving the applicant in the main proceedings of the possibility of having that sign registered as a trademark with respect to that bringing together service, its application for registration with respect to Class 35 of the Nice Classification cannot be rejected on the sole ground that the assortment of services which it intends to provide to the consumer could also include services offered by itself.
The Court gives the following answers to the first and second question:
- Services rendered by an economic operator which consist in bringing together services so that the consumer can conveniently compare and purchase them may come within the concept of ‘services’ referred to in Article 2 Trademark Directive.
- The Trademark Directive must be interpreted as imposing a requirement that an application for registration of a trademark with respect to a service which consists in bringing together services must be formulated with sufficient clarity and precision so as to allow the competent authorities and other economic operators to know which services the applicant intends to bring together.
The availability of service mark protection for enterprises bringing together a number of different services, in parallel to the availability of service mark protection for retail (or wholesale) services relating to goods, appears as a logical extension of the Court’s PRAKTIKER decision, where the Court had accepted the latter category of service mark, provided that the goods with regard to which the service was rendered are properly identified. The Court did not consider it necessary to decide or discuss the question of whether services brought together as described amounted to “retail” services. Indeed, it seems questionable whether the concept of wholesale and retail can be applied to the rendering of services.
As regards services relating to the applicant’s owns services, the scepticism in the present case contrasts with the ease with which the Court accepted that “retail services” with regard to goods may also be provided in relation to the applicant’s own goods, as decided on the same day (July 10, 2014), in the Apple Store case, C-420/12.
The decision in the Apple Store case, Case C-421/13, subject of a reference by the Federal Patent Court of the same day as the present reference, is the subject of a separate Report.