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Tuesday, 18 January 2005

... AFTER THE AGONY, NOW THE ECSTASY!


The previous blog (see below) bemoaned the non-appearance of English and French versions of the European Court of Justice Opinion in Praktiker Bau that looked as though it was very important to us IP enthusiasts.

Praktiker: the cause of all the fuss

Following from this, a thousand thanks to the IPKat's doughty friend Tibor Gold (Kilburn & Strode), who sent him an email today that reads as follows:

This Opinion of 13.01.05 was delivered in French yet extraordinarily is not available in French on the ECJ website. This summary is from the German with very cursory comparison with the Spanish.

This concerned a ref under Art. 234 EC to the ECJ by the Bundespatentgericht. The questions were:

1 Does retail trading constitute a service within the meaning of Article 2 of the Directive?

If the answer to this question should be affirmative:

2 To what extent must the content of such services by a retailer be specifically stated in order to guarantee the certainty of the subject-matter of trade mark protection that is required in order to
(a) fulfil the function of the trade mark pursuant to Article 2 of the Directive, namely distinguishing the goods or services of one undertaking from those of other undertakings, and
(b) define the scope of protection of such a trade mark in the event of a conflict?

3 To what extent is it necessary to define the scope of similarity (Article 4(1)(b) and Article 5(1)(b) of the Directive) between those services by a retailer and
(a) the other services provided in connection with the sale of goods, or
(b) the goods sold by that particular retailer?

In brief, the A-G affirmed/opined that:

re 1, marks may be registered for retail services;

re Q2, such registrations must be ‘concretised’ (made specific) sufficiently such that others can ascertain the concrete services for which the mark is registered as well as the goods or types of goods to which such services relate; and

re Q3, a registration for the concretised retail services, as in the answer to Q2 is not limited, as regards the scope of ‘similarity’ under Article 4(1)(b) and Article 5(1)(b) of the Directive, by the other services provided in connection with the sale of goods, or the goods sold by that particular retailer – in this connection, the A-G approves the following extract from Communication 3/01 of 12 March 2001 of the President of OHIM (the post-Giacomelli Communication):

Conflicts

The limitation of applications and registrations for such services by indicating the field of activity of retail or other selling services will reduce the likelihood of conflicts because the risk of confusion between, for example, retail sales of meat on the one hand and of electrical goods on the other is non-existent.

As regards conflicts between services and goods, the Office takes the view that, while a "similarity" between goods sold at retail and retail services cannot be denied in the abstract, the risk of confusion is unlikely between retail services on the one hand and particular goods on the other except in very particular circumstances, such as when the respective trade marks are identical or almost so and well-established in the market. Each case that arises will of course be dealt with on its own merits.

Given that situation those requesting registration of marks for retail (or similar) services should not expect that they thereby obtain protection against the use or registration of marks for goods. If such protection is required as well, it is clear that registration for goods must be requested as well.”

Giacomelli: the case that started the saga

The IPKat (who points out that the Giacomelli case is available in English at [2000] ETMR 277) rejoices both that he now has some idea what's going on and also that the Advocate General's Opinion appears to make some sense.

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