Statutory guidance

PAN 1/15: Trade Mark Applications seeking to protect the retailing or 'bringing together' of services.

Published 31 March 2015

1. Practice Amendment Notice (PAN) Introduction

This notice confirms UK practice in respect of trade mark applications which seek to protect the retailing (or ‘bringing together’) of services as opposed to goods. It takes into account the Court of Justice of the European Union’s (‘CJEU’) judgement in Case C- 420/13 Netto Marken-Discount AG & Co. KG v Deutsches Patent- und Markenamt (‘Netto Marken’), which confirmed that the retailing of services is, in principle, a commercial activity entitled to protection, and also provided guidance on how such claims should be worded in order to ensure that the requirements for clarity and precision are met.

Following the decision of the CJEU in Praktiker Case C-418/02, PDF 50.3KB, the Registrar has already established a practice for examining those applications which seek to protect the retailing of goods (see both the Classification and Examination Guides published on the IPO website). This was supplemented in 2008 by further guidance confirming classification practice for those services normally brought together by shopping centre operators (see Land Securities plc (and others) CH2008 APP 0278/0279/0281.

This notice complements the existing practice by explaining how the Registrar will assess specifications seeking to protect the retailing (or ‘bringing together’) of services in more general terms. On publication, it will be incorporated into both the Classification Guide and the Examination Guide.

2. Background

In Netto Marken, the referring Court sought clarification as to whether the term ‘services’, as used in both Directive 2008/95/EC, PDF 71.1KB and the Paris Convention, encompasses the ‘retailing of services’. In the event that it does, further clarification was sought as to the level of clarity and precision required in order to adequately describe those services. This second point was made in reference to the Netto Marken application itself, which used general indications and class numbers in order to denote the services being brought together in a retail environment.

At paragraph 39 of its decision, the CJEU confirmed that the act of bringing together (a variety of) services for the benefit of the consumer should, in principle, be deemed capable of being categorised as a service:

the supply described in its application for registration, by means of the words ‘the bringing together, for the benefit of others, of a variety of services enabling customers conveniently to purchase those services’ is capable of being categorised, for the reasons set out in paragraphs 34 to 37 of this judgement, as a service.

Having confirmed that fundamental point, the CJEU then considered how the wording of a typical ‘bringing together of services’-type specification might conform to the requirements for clarity and precision as set out in Case C-307/10 Chartered Institute of Patent Attorneys (‘IP Translator’). On this, the Court placed greater emphasis upon the importance of defining the services being brought together, as opposed to defining the action of ‘bringing together’ itself (thereby echoing its earlier ruling in Praktiker). In accordance with IP Translator, the ruling confirmed that general indications and class headings may be used in the context of a ‘retailing of services’ -type specification, provided that they meet the requirements for clarity and precision and, in the case of class headings, specify whether all or only some of the listed services are intended for protection.

3. Change to UK classification practice - what can be accepted?

This decision confirms that the ‘bringing together of services’ is an activity which is entitled to protection, and so UK classification practice is being updated accordingly. Whereas existing practice has only permitted the bringing together of those services which are likely to be provided in the context of a shopping centre, IPO’s new practice will accept claims to ‘the bringing together of…’ of almost any service, subject to that claim meeting the overall requirements for clarity and precision.

The following are example specifications which will now be deemed acceptable:

• The bringing together, for the benefit of others, of a variety of legal services, enabling customers to conveniently view and purchase those services.
• The bringing together, for the benefit of others, of slimming club services, video-on- demand services, and detective agency services, enabling customers to conveniently view and purchase those services.
• The bringing together, for the benefit of others, of a variety of broadcasting services, enabling customers to conveniently view and purchase those services.

The example specifications presented above satisfy two requirements. Firstly, they all use the familiar terms ‘bringing together, for the benefit of others… enabling customers to view and purchase…’ in order to ‘frame’ the services being brought together and describe the actual retail activity itself. Secondly, in describing the services which are being brought together, they all employ terms which are understood and acceptable in their own right (e.g. legal services, broadcasting services, slimming club services etc.). In order to meet the fundamental requirements for clarity and precision as confirmed by IP Translator, any claim to the retailing or ‘bringing together’ of services must be worded in this manner.

Users should note that the examples presented in paragraph 8 above do not specify how or where the services are being brought together (they do not, for example, make any reference to the services being brought together ‘in a retail store’, ‘in a wholesale outlet’, or ‘from an Internet website’). The Registrar will not insist on this degree of qualification in order to render such specifications acceptable. However, in the interests of ensuring maximum levels of clarity and precision, the Registrar would encourages users to include such information in any specification filed.

4. Change to UK classification practice - what will not be accepted?

Users should note that the Registrar’s new classification practice in respect of the bringing together of services differs from the current practice in respect of the bringing together of goods. In the case of the latter, the Registrar will continue to accept a variety of different wordings including not only ‘the bringing together of…’, but also, for example, ‘retail services connected with…’, ‘retail services connected with the sale of…’ and ‘electronic shopping retail services connected with…’. In the case of the bringing together of services, it should be noted that such variations will not be permitted, and so claims such as those presented below will be subject to an objection:

• Retail services connected with takeway services.
• Retail services connected with the sale of legal services.
• Mail order retail services connected with the sale of detective agency services.

Although the above examples describe the services being brought together with sufficient clarity, the overall wording (particularly the use of ‘Retail services connected with… services’) fails to provide any clear distinction between the retailing of services and the provision of those services in their own right. To address this, an applicant using such terminology will be invited to amend the specification to, for example:

• The bringing together, for the benefit of others, of a variety of takeaway services, enabling customers to conveniently view and purchase those services from a [retail outlet/Internet website/other environment].

An objection will also be taken against any claim which fails to describe the services being brought together with sufficient precision or clarity (regardless of whether the ‘bringing together of…’ format has been employed). This will most obviously occur where an applicant seeks to register a mark in respect of the bringing together of those services already identified by the Registrar as being too imprecise (see, in particular, the list of unacceptable general indications agreed by IPO, OHIM and other National Offices, and published in the Trade Marks Manual in response to the IP Translator decision). It will also occur where the Registrar simply finds that the services being brought together are poorly defined, or where they are omitted outright. To illustrate, the following specifications would be subject to an objection:

• The bringing together, for the benefit of others, of a variety of repair services, enabling customers to conveniently view and purchase those services from a retail outlet and Internet website.
• Retail services connected with the sale of personal and social services rendered by others to meet the needs of individuals.
• The bringing together, for the benefit of others, of a variety of services, enabling customers to conveniently view and purchase those services.

In all such cases, an objection will be taken under section 1(1) of the UK Trade Marks Act 1994, and Rule 8(2)(b) of the Trade Marks Rules 2008.

5. Distinction between the retailing of services and the provision of services per se

Users should note that the CJEU’s ruling is not to be interpreted as providing a means for obtaining duplicative protection of services already registered in their own right (whether proper to class 35 or elsewhere). Nor should it be as perceived as an alternative means for providing protection in respect of the advertising of one’s own services. The important distinction between, on the one hand, the services involved in the retailing of products, and on the other, the mere selling and/or advertising of one’s own goods or services was reiterated by the CJEU in Case C-421/13 Apple Inc. v Deutsches Patent- und Markenamt (‘Apple Store Layout’) where, at paragraph 26, the following was stated:

a sign depicting the layout of the flagship stores of a goods manufacturer may legitimately be registered not only for the goods themselves but also for services falling within one of the classes under the Nice Agreement concerning services, where those services do not form an integral part of the offer for sale of those goods…

Where the Registrar is unsure as to whether a specification denotes the bringing together of services or the provision/advertising of those services per se, an objection will be taken, and the applicant invited to amend its specification in accordance with this guidance. This will apply, for example, where a specification describes activities which fall outside of what one would reasonably expect to be covered by the term ‘retailing’, see:

• The bringing together, for the benefit of others, of (a variety of) broadcasting services, enabling customers to make use of such facilities, including over a global computer network.

6. Effect on pending applications

In order to comply with the Court’s judgement, pending applications that do not conform to the revised practice will require amendment. Examiners will write to the applicant or representative and allow sufficient time in which to make proposals to amend the specification(s).

7. Implementation

This practice will come into effect from March 2015.

All previous PANs have been incorporated into Examination Guide.