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Friday, 11 July 2014

Netto: the service of bringing together services can be a service, says CJEU

Re-tail service? Not
for Maxie the Manx
Apple Inc's store lay-out was not the only retail issue involving trade mark registration in Europe to attract the attention of the Court of Justice of the European Union (CJEU). Case C-420/13 -- like Apple, a reference for a preliminary ruling from Germany -- was also before the court yesterday. The action was Netto Marken-Discount AG & Co. KG v Deutsches Patent- und Markenamt. Coincidentally, in neither case did the CJEU call for the advice of the Advocate General. This is a possible sign that the court is becoming more confident in its ability to deal with trade mark questions thinks the IPKat or, [more likely, says Merpel] that it considers that the questions currently being referred from Germany simply aren't difficult enough to justify the extra six-month delay caused by asking the Advocate General for an Opinion and then going to the trouble of reading it..

So what was this case about? In September 2011 Netto applied to the German Patent and Trade Mark Office ('DPMA') to register the attractive little mark on the left as a trade mark for goods and services in Classes 18, 25, 35 and 36 of the Nice Agreement. The problem lay with Class 35, where the application read:
‘Class 35: 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.’
In September 2012 the DPMA rejected the application so far as it was submitted for services in Class 35 since, under Paragraph 20(1) of the German trade mark law ('MarkenV') was not satisfied, since the services which Netto listed in its application could not, in the DPMA's opinion, be clearly distinguished from other services in either their substance or scope. Netto appealed to the Bundespatentgericht, which decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling:
‘(1) Is Article 2 of [Directive 2008/95] 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 of the 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?
(a) Does it suffice for the purposes of specification of the services if (i) just the field of services in general or general heading,

(ii) just the class(es) or

(iii) each specific individual service
is indicated?

(b) 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? 
(3) If the answer to the first question is in the affirmative:

Is Article 2 ... to be interpreted as meaning that the scope of trade mark protection afforded to retail services extends even to services provided by the retailer itself?’
Yesterday the CJEU ruled as follows:
1. 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 of Directive 2008/95 .... [but then, again, they may not. The important thing is that they're not barred from being 'services']

2. Directive 2008/95 must be interpreted as imposing a requirement that an application for registration of a trade mark 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.
It seems to this Kat that if the words "other economic operators", referred to in the ruling, mean "other shops and their customers", they generally have a pretty good idea of which services Netto -- or any other shop -- intends to bring together.  The big pain in the backside problem is that trade marks are granted by "competent authorities" which are generally far more out of touch with the reality of the marketplace because of their determination to deconstruct ordinary human transactions and responses and reconstruct them as principles of law.

Service with a smile here
Speediest service here

7 comments:

Anonymous said...

I agree - the questions referred by the German Court in this and the Apple shop design case are simply not difficult and should not have been referred.

German Lawyer Abroad said...

Anonymous should be appointed to the German Federal Patent Court!

Anonymous said...

Re the last paragraph -privatise it -like the NHS no doubt. And see if there is less mayhem.One gets tired of the knocking of "competent authorities" in their various forms on these blogs. Very often the lowly trade mark examiners in your UKPTO issue far better argued decisions than their superiors in the courts especially your High Court.

Birgit Clark said...

Jeremy, I think these are referrals that were worth making. Don't forget that there may be underlying German national law "traditions".... and a rubber stamp by the CJEU makes life easier. ;-)

Anonymous said...

Yes indeed, or to IPKat (!) German Lawyer Abroad ...

Jeremy said...

Duly noted, Birgit -- but what would have happened if these references had never been made? In the two decades that have passed since the new European trade mark regime came into force, haven't retailers been able to cope pretty well in their business activities without knowing the answer to the Netto and Apple questions?

Let's discuss when the opportunity arises!

Anonymous said...

I am surprised that the CJEU judgment is not read with more attention and was rendered without the AG opinion. It is a very important judgment giving some very important further interpretation of IP Translator.

Firstly, it reinforeces the principle "what you see is what you get". Paragraph 51 clarifies that there is no presumption that the applicant / CTM proprietor includes the alphabetic list including the orphans. The applicant / CTM proprietor must actively "specify" whether he wants all goods of the applications. Maybe he may then have to declare, for a CTM, a limitation in accordance with Article 43 CTMR ... as long as it is not an extension ...

On the other hand, it raises the doubt about the "relevant public" adressed by retail services. Who pays the service? Is it the client (as we all had understood Praktiker) or is it a B2B service, such as it would appear in paragraphs 35 and 36 (advertising services, sales promotion for third parties)? Or does this depend on the precise wording of the service?

Finally, the Court of Justice considers that it is not up to its competencies to decide whether the services as defined by NETTO are clear and precise, but to the national court. And honestly: who understood what NETTO applied for? What is the business NETTO tried to define?

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