Legal Updates on Trade Mark Extension

Intellectual Property: The ECJ Extends the Use of Trade Marks to Goods and Services

The European Court of Justice ("ECJ") ruled in Praktiker Bau- und Heimwerkermärkte (C 418/02) that a trade mark that is now in use by a company on its goods can be extended to cover the services provided by this company.

A DIY retailer Praktiker Märkte, filed for registration with the Deutsches Patent und Markenamt (the German Patent and Trade Mark Office) of the mark PRAKTIKER in respect of the slogan 'retail trade in building, home improvement and gardening goods for the do-it-yourself sector.' However the German Patent Office refused registration of this slogan on the grounds that the concept of 'retail trade' did not denote independent services having autonomous economic significance.

Praktiker Märkte brought an appeal before the Bundespatentgericht (Federal Patents Court) against the rejection of its application. The company argued that the economic trend towards a service society necessitated a re-appraisal of retail trade as a service.

The consumer's purchasing decision would increasingly be influenced not only by the availability and price of a product, but also by other aspects such as the variety and assortment of goods, their presentation, the service provided by staff, advertising, image and the location of the store, etc. Such services provided in connection with retail trade enabled retailers to be distinguishable from their competitors. They further argued that such services ought to be eligible for protection by service marks.

The case was referred to the ECJ who concluded that:-
 

• Retail services should be registered as trade marks if the services differ from the goods under which the trade mark is sold; and
• The contents of the services provided by the retailer must be specified so as to enable consumers to know in concrete terms (1) what the service consists of (expressions such as "retail trading" or "retail services" are not explicit enough) and (2) what goods or types of goods the services relates to.

Comment: This is a significant decision for trade mark owners.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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