Practice Amendment Notice

PAN 6/05 - Issued 11 November 2005

This notice affects examination and classification practice about retail service.

Retail services

The text of this practice has changed. Paragraphs 33-33.5 in the Work Manual, Chapter 6 (Examination and Practice) have been deleted and replaced by the text shown below. Paragraph 5.2.50 (only) in the Work Manual, Chapter 5 (Classification) has also been deleted and replaced by the text shown below. Please note that this practice change also affects Chapter 10 (International Section). The paragraphs in Chapter 10 will be amended in due course.

33 Retail services

In Case C-418/02, reference for a preliminary ruling under Article 234 EC from the Bundespatentgericht (Germany), was made to the European Court of Justice in relation to an application from Praktiker Bau- und Heimwerkermärkte AG, concerning the registration of a trade mark in respect of services provided in connection with retail trade.

In reply to the questions asked of it, the Court ruled in its judgment issued on 7 July 2005 that:

"1. The concept of 'services' referred to by First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, in particular in Article 2, covers services provided in connection with retail trade in goods.

2. For the purpose of registration of a trade mark for such services, it is not necessary to specify in detail the service(s) in question. However, details must be provided in connection with regard to the goods or types of goods to which those services relate."

33.1 Scope and effect of the Praktiker decision

The services provided by retailers are recognised by the Court as being "..all activity carried out by the trader for the purpose of encouraging the conclusion of ..a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the above mentioned transaction with the trader in question rather than with a competitor".

Accordingly, these are the services covered by a "retail services" type registration.

The Court stated that it is not necessary to specify in detail the retail services for which registration is sought. Rather general wording may be used. In that connection the Court cited with approval the wording in the explanatory note to Class 35 of the International Classification, namely, "the bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods."

Having recognised that there is no barrier to the registration of services connected with the retail trade in goods, the Court did not draw any distinction between the various forms of retail services (for example, supermarkets, department stores, specialist retail outlets, mail order, electronic shopping etc). Whereas in the past it was a requirement in the UK to specify the precise nature of the retail services being provided, the Court makes it clear that this is not required and that the emphasis is to be placed on the nature of the goods supplied in connection with the services. Consequently, it is necessary to specify the goods or types of goods in all cases.

The mark Praktiker was filed for registration in relation to, inter alia, retail services in connection with the "building, home improvement and gardening goods for the do-it-yourself sector". The Court approved this as being sufficient to identify the types of goods connected with the services applied for. Consequently, an indication of the types of goods concerned with the services will be sufficient, although applicants may list the associated goods in more detail if they so wish. Note that a registration for retail services does not cover the sale of goods themselves and therefore if applicants require protection for their marks to include the transaction that occurs between the customer and the retailer at the point of sale, it will be advisable to file in the appropriate goods classes in respect of those items that are being sold under the trade mark.

33.2 What is acceptable

The following paragraphs provide guidance on what is (and what is not) acceptable and the effect of the revised practice on pending applications and existing registrations.

Acceptable

  • The bringing together, for the benefit of others, of a variety of [indicate goods or types of goods], enabling customers to conveniently view and purchase those goods;
  • The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase [indicate goods or types of goods];
  • Retail services connected with [indicate goods or types of goods];
  • Retail services connected with the sale of [indicate goods or types of goods];
  • Retail store services in the field of [indicate goods or types of goods];
  • Department store retail services connected with [indicate goods or types of goods] as in, for example:

    Department store services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, cameras, domestic electrical and electronic equipment, including white goods, jewellery, clocks, watches, stationery, publications, leather goods, luggage, furniture, household containers and utensils, furnishings, textiles, clothing, footwear, headwear, haberdashery, toys and games, sports equipment, foodstuffs, drinks and tobacco products;
  • Shop retail services connected with [indicate goods or types of goods];
  • Mail order retail services connected with [indicate goods or types of goods];
  • Electronic shopping retail services connected with [indicate goods or types of goods];
  • Retail clothing shop services;
  • Stationery shop retail services connected with the sale of stationery, printed matter, computer equipment and peripherals and home entertainment products;
  • The bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods from a clothing and clothing accessories catalogue by mail order or by means of telecommunications.

Not acceptable

  • Sale of electrical and electronic goods for industrial use [the sale of goods is not a service];
  • Trade in building products [trading in goods is not a service];
  • Retailing [retailing goods is not a service per se];
  • Retailing of cars [retailing of goods is not a service];
  • Retail services for the sale of foods [sale of goods is not a service];
  • Retail off licences specialising in the sale of alcoholic beverages [sales are not a service];
  • Shops [not a service per se];
  • Factory shops [not a service per se];
  • Shopkeeping [not a service per se];
  • Merchandising[not a service per se];
  • Distributorship [not a service per se];
  • Sales services [not a service per se];
  • Direct selling [not a service per se];
  • Mail order [not a service per se];
  • Television shopping [not a service per se];
  • Electronic shopping [not a service per se];
  • Computer shopping [not a service per se];
  • E-commerce [not a service per se];
  • Retail services [unqualified];
  • Retail store services [unqualified];
  • Department store services [unqualified];
  • Mail order catalogue services [unqualified];
  • The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those [unqualified] goods;
  • The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a department store ["department store" does not identify the types of goods];
  • Retail services connected with the sale of electrical and electronic goods [the terms "Electrical" and/or "Electronic" are too vague without further indication to define types of goods];
  • Retail services connected with stationery products and the like goods ["and the like goods" fails to identify the goods or types of goods];

33.3 Wholesale services

The Court's judgment did not include any observations concerning the acceptability of services provided by wholesalers. However, the same practice will apply as for retail services and it will be necessary to specify the goods or types of goods, as in, for example:

  • Wholesale services connected with the sale of [indicate goods or types of goods]

33.4 Where the specification is deficient

For descriptions which identify retail services but which do not clearly indicate the goods or types of goods connected with the services, an objection will be raised under section 1(1) and/or Rule 8(2)(b) (because such claims do not clearly identify "services" within the meaning of s1(1) of the Act). Similarly, specifications which include descriptions that adequately identify the goods, but fail to define the retail services, (for example, "sale of clothing") will face similar objections.

33.5 Effect on pending applications

In order to comply with the Court’s judgement, pending applications that do not conform with the revised practice will require amendment (except those applications that have already been fully accepted and which include specifications agreed under the previous practice). Examiners will write to applicants or their representatives and allow sufficient time in which to make proposals to amend their specifications.

33.6 Effect on registrations

Owners of registered marks may request a restriction of their specifications (in order to comply with the revised practice). For example, a registration in Class 35 for:

  • "The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a department store"

could be amended by requesting part surrender of the specification (using Form TM23) as in, for example:

  • "Surrendered in respect of all services except the bringing together, for the benefit of others, of a variety of [ state goods or types of goods ] , enabling customers to conveniently view and purchase those goods in a department store";

33.7 Absolute Grounds for refusal

Retail stores are commonly named after their geographical location. Retail services will therefore be classified as a local service and applications to register geographical place names as trade marks for such services will normally be objected to.