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
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