It's just not tennis: Netto service mark called "out"

Is this the mark? Boek9.nl suggests so
but there are no pretty pictures on the
CJEU and IPO web pages ...

Earlier today this Kat reversed a long-standing policy and decided that, when national courts within the European Union seek to refer questions of European trade mark law to the Court of Justice of the European Union (CJEU) for a preliminary ruling, he would save everyone the hassle and the inconvenience of having to wait the best part of two years waiting for an answer by giving an answer straight away (see earlier Katpost here). Suddenly he finds himself having the chance to do so again, in Case C-420/13 NETTO MARKEN DISCOUNT, a reference from the German Bundespatentgericht.

According to the UK Intellectual Property Office (IPO), this case concerns a request for a preliminary ruling as to the registrability of a word-and-figurative sign as a trade mark. The application was refused on the basis that the services were not clearly and precisely distinguishable from other services in substance or scope. What the referring court asks is this:

1. Is Article 2 of the directive [2008/95 to approximate the laws of the Member States relating to trade marks] to be interpreted as meaning that a service within the meaning of this provision also encompasses retail trading in services? [Search me, says Merpel.  This Kat, also unfamiliar with the term "retail trading in services", conducted an internet search which threw up just two positive results, relating to the reporting of this case on the UKIPO and Boek9.nl websites respectively.  He feels that the CJEU will read into the Directive's Recitals and its own earlier case law a general principle that no lawful commercial activity in the single European market which involves trade in goods or services, in which the activities of one trader are distinguished from another by the use of a sign, should be deprived of an entitlement to apply for and be granted a trade mark for that purpose]

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 exactly the same way as the goods that a retailer markets? [Says this Kat, if this is an invitation to the court to say whether Case C-307/10 Chartered Institute of Patent Attorneys ("IP TRANSLATOR") applies to services as well as goods, he thinks the court will say yes]

(a) Does it suffice for the purposes of specification of the services if

(aa) just the field of services in general or general indications,

(bb) just the class(es) or

(cc) each specific individual service is stated? [Says the Kat, the court will answer this in general terms and the answer to this will have to depend in each case on the nature of the services and the class(es) of services for which an application is made; sometimes, therefore, the answer will be "yes, no and maybe: it all depends"]

(b) Do these details then take part in determining the date of filing or is it possible, where general indications or classes are stated, to make substitutions or additions? [The Kat has a funny feeling that the court will say that, while the effect of the date of filing must be the same in each Member State, what constitutes the date of filing is a matter for each Member State to decide for itself -- but he welcomes guidance on this point]

3. If the answer to the first question is in the affirmative:

Is Article 2 of the directive to be interpreted as meaning that the scope of trade mark protection afforded to retail services extends even to services rendered by the retailer himself? [The Kat has already discussed this question here]

In tennis, it's the service that ends up in
the net; in TM law, it's Netto's service mark that gets called "out"

This case and the questions referred to the court can be viewed on our website at:

If you would like to comment on this case and thereby influence the UK government to intervene, just email policy@ipo.gov.uk by 16 September 2013.

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