Retailers have been able to protect brand names in connection with the provision of retail services of products for a number of years. The position has not been so clear-cut for retailers who provide retail services of third party services, such as price comparison providers and travel agents. Following a decision of the Court of Justice of the European Union (“CJEU”), service agglomerators can now protect trade marks in relation to “retail services of services” across the European Union (“EU”).
Netto Marken-Discount AG & Co. KG (“Netto”) filed a trade mark application at the German Registry in a number of classes, including the term “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…” in Class 35. The German Registry refused to accept this term stating that it was ambiguous and could not be clearly distinguished from other services. Netto appealed to the German Federal Patent Court which, in turn, referred the issue to the CJEU.
The CJEU held that the provision of services which consist of the bringing together of third party services so that the consumers can conveniently compare and purchase them can qualify for trade mark protection. Pragmatically, the CJEU stated that it is “clear that there are situations in which a trader selects and offers an assortment of third party services so that the consumer can choose amongst those services from a single point of contact”. However, the wording of the Class 35 specification must be clear and precise.
The CJEU held that, in order to comply with this requirement, it is not necessary to specify each of the activities making up the services but the services being brought together must be indicated.
UK Intellectual Property Office (“UK IPO”) Practice Amendment Notice 1/15
To bring the UK IPO’s practice in line with this decision, a Practice Amendment Notice was published stating that retail services of services will now be accepted provided that (1) the familiar term ‘bringing together, for the benefit of others.. enabling customers to view and purchase…’ is used in order to ‘frame’ the services being brought together and (2) the third party services which are being brought together are described.
This is a positive development for brand owners which redresses a gap in trade mark protection in Europe.