It was already possible to register a trademark for the “retailing of goods” in the European Union. However, in relation to the retailing of services, the Court of Justice of the European Union (CJEU) was recently able to rule on the validity of the service in class 35.
In September 2011, the company Netto Marken-Discount applied for the registration in Germany of its logo represented above in classes 18, 25, 35 and 36. With respect to the class 35, the company emphasised the following services:
“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 German Patent and Trade Mark Office (Deutsches Patent und Markenamt) rejected this trademark application on the ground that the listed services could not “be clearly distinguished from other services in either their substance or scope.” Netto appealed this decision to the Federal Patent Court of Germany (Bundespatentgericht). Noting that the CJEU never ruled on whether retail trade in services was a valid service, the Federal Court referred a question to the CJEU for a preliminary ruling.
The CJEU considered that the retailing of services may qualify as a service, provided the application for registration was “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.”[1] In fact, according to Article 2 of the Directive n° 2008/95/EC to approximate the laws of Member States relating to trade marks, the CJEU allows to encompass retail trade in services within class 35. Following this decision, it is now possible to obtain protection for the retailing of services in the European Union.
[1] CJEU, 3rd Ch., Netto Marken-Discount AG & Co. KG v. Deutsches Patent und Markenamt, July 10, 2014, Case C-420/13.