Office for Harmonization in the Internal Market (Trade Marks and Designs) EU-CHINA Project IPR2 OHIM practice on retail service trade marks Beijing – 9/10 June 2011

Office for Harmonization in the Internal Market (Trade Marks and Designs) Summary 1.Introduction 2.History of retail services and registration 3.Classification 4.Absolute grounds 5.Opposition - Invalidity

Office for Harmonization in the Internal Market (Trade Marks and Designs) Introduction Total number of CTM applications on 30/04/2011: 958,650 Applications for retail services: 40,076

Office for Harmonization in the Internal Market (Trade Marks and Designs) Introduction Retail: „the activity of selling goods to the public, usually in small quantities“ (Cambridge dictionary) Service: - „provision of a facility to meet the needs or for the use of a person or thing“ (Oxford dictionary) - „behaviour conducive to the welfare or advantage of another“(Oxford dictionary)

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Minutes of the Council meeting at which the CTMR was adopted (1993): „The Council and the Commission consider that the activity of retail trading in goods is not as such a service for which a Community trade mark may be registered under this Regulation.“ Examination Guidelines 1996: „The activity of retail trading is not as such a service.“

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Nice Classification 7th edition, Explanatory note to class 35: This Class includes, in particular: „the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase goods“ For the benefit of others refers to the customers.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Nice Classification 7th edition, 1997 Explanatory note to class 35: This Class does not include, in particular: The activity of an enterprise the primary function of which is the sale of goods, i.e. of a so-called commercial enterprise.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Rule 2(2) CTM IR: „The list of goods and services shall be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified in only one class of the Nice Classification.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History OHIM Board of Appeal in Case R 46/ of 17 December 1999 (Giacomelli) : The argument of the examiner that retail services fail to identify a service for the benefit of others is incorrect. Common experience that the consumer prefers the service provided by one particular shop over that of another.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History OHIM Board of Appeal in Case R 46/ of 17 December 1999 (Giacomelli) : What do the services consist of? - the range of goods provided; - the way in which the goods are laid out; - the overall convenience it affords; - the attitude and commitment of the staff; - attention given to the customers. The goodwill of a retail business is built on the service it provides.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History OHIM Board of Appeal in Case R 46/ of 17 December 1999 (Giacomelli) : There needs to be a comprehensible description of the service including a reference to the field in which the services are rendered. Without such a reference, it would plainly be difficult for the Examination Division to assess, for example, whether or not the trade mark fails under the absolute grounds from refusal contained in Article 7 CTMR.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 3/01 of the President of the Office of 12 March The meaning of the term retail services is clear and for the purposes of classification in accordance with Article 28 CTMR and Rule 2 (CTM IR) nothing more is necessary. „the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase goods“ is also an acceptable term.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 3/01 of the President of the Office of 12 March „Services rendered in connection with the selling of goods at retail are eligible for registration but not the retailing as such“. „What is accepted is the services rendered in connection with the retailing of goods.“

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 3/01 of the President of the Office of 12 March The meaning of the term „retail services“ is clear and for the purpose of classification in accordance with Rule 2(2) CTM IR. The Office does not accept the view expressed in the Giacomelli case that the reference to the field of activity is a legal necessity.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 3/01 of the President of the Office of 12 March However, the Office does consider that a limitation to the field of activity (retail services in respect of food and beverages) or more specific nature of the retail service (retail services of a department store) is desirable. The Office will apply the same principles to similar services rendered in connection with other forms of sales activities relating to goods, such as mail order, internet shopping and wholesale.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 3/01 of the President of the Office of 12 March Conflicts Similarity between goods sold at retail and retail services cannot be denied in the abstract. The risk of confusion is unlikely except in very particular circumstances, such as when the marks are identical or almost so and well established in the market.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 3/01 of the President of the Office of 12 March Conflicts The indication of the field of activity of retail will reduce the likelihood of conflicts. The likelihood of confusion between, for example, retail services of meat and retail services of electrical goods is non existent.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Case C-418/02 „Praktiker“, Judgment of the Court of Justice of 7 July 2005: The German PTO refused the mark PRAKTIKER for „retail trade in building, home improvement, gardening and other consumer goods for the do- it-yourself sector“. The concept of ‚retail trade‘ claimed does not denote independent services having autonomous economic significance.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Case C-418/02 „Praktiker“, Judgment of the Court of Justice of 7 July 2005: „Does retail trade in goods constitute a service?“ The objective of retail trade is the sale of goods to consumers. That trade includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Case C-418/02 „Praktiker“, Judgment of the Court of Justice of 7 July 2005: The concept of ‚services‘ covers services provided in connection with retail trade in goods. Therefore, trade mark protection should be available for the trader.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Case C-418/02 „Praktiker“, Judgment of the Court of Justice of 7 July 2005: To what extent must the content of such services provided by a retailer be specified in order to guarantee the certainty of the subject-matter of trade mark?

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Case C-418/02 „Praktiker“, Judgment of the Court of Justice of 7 July 2005: There is no need to further specify the retail service. It is sufficient to use general wording, such as ‚bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods‘.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Case C-418/02 „Praktiker“, Judgment of the Court of Justice of 7 July 2005: The applicant must be required to specify the goods or types of goods to which the retail services relate by means, for example, of particulars such as those contained in the PRAKTIKER application. („retail trade in building, home improvement, gardening and other consumer goods for the do- it-yourself sector“)

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Case C-418/02 „Praktiker“, Judgment of the Court of Justice of 7 July 2005: For the purposes of registration of a trade mark for retail services, it is not necessary to specify the service(s) in question. However, details must be provided with regards to the goods or types of goods to which those services relate.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 7/05 of the President of the Office of 31 October The activity of retail in goods does not consist in the mere act of selling the goods, but in the services rendered around the actual sale of the goods, circumscribed in the explanatory note to class 35.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 7/05 of the President of the Office of 31 October „Praktiker“ requires „to provide details with regard to the goods or types of goods to which those services relate the Office. Thus, „retail services“ or „retail services of a supermarket“ are no longer acceptable.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 7/05 of the President of the Office of 31 October Exact specification is not necessary, but rather the provision of details concerning the goods or types of goods. The Office will accept broad categories, regardless of whether they could be properly classified as goods under the goods classes. This is because the protection for retail services is exactly not conferred to the actual act of sale of those goods.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 7/05 of the President of the Office of 31 October Conflicts Retail services as such will not be considered similar to any goods. Earlier rights in oppositions registered for „retail services“ will be considered to be registered or limited in relation to retail services for those goods which have actually been sold at retail.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 7/05 of the President of the Office of 31 October Conflicts Conflicts between trade marks claiming retail services for different goods will be judged according to the normal criteria.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 7/05 of the President of the Office of 31 October The same applies to similar services rendered in connection with other forms exclusively related to the sales of goods such as wholesale, Internet shopping, catalogue or mail order and e- commerce services in class 35. Sales of goods is not a service; „sales“ as such, whether or not coupled with the indications of the type of goods sold, is not sufficient.

Office for Harmonization in the Internal Market (Trade Marks and Designs) History Communication No 7/05 of the President of the Office of 31 October The principle does not apply to other services which are not limited to services around the sales of goods, such as distribution services, or repair.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Classification OHIM practice Retail services are acceptable, with or without specification of the nature of the retail activity, as long as the type of goods sold at retail is indicated. Acceptable: retail services relating to „foodstuff“, „electronic goods“. Not acceptable: retail services relating to „gifts“, „lifestyle accesories“, „fair trade products“, „the goods in class 9“.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Classification OHIM practice If the nature of the place in which the goods are sold is sufficienty specific to allow the recognition of the category of the goods, this will also be accepted. Acceptable: retail services related to „clothes shops“, „garden centres“, „bakers“. Not acceptable: retail services of a supermarket.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Classification OHIM practice Retail services in relation to services is not a service in itself. „The bringing together of service providers“ is acceptable: view and choose/collection and provision of information. Services provided by Internet operators offering room on servers is considered a hosting service (class 42).

Office for Harmonization in the Internal Market (Trade Marks and Designs) Classification OHIM practice The practice on retail services for goods applies to any service similar to retail services, such as wholesale, mail order and telephone shopping services.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute grounds OHIM practice T-379/03, Cloppenburg The BoA has not established that it is current practice in trade to indicate the geographical origin of retail services. …, the geographical origin of such services is not usually regarded as a relevant characteristic.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute grounds Case law T-230/05, GOLF USA There is a direct link between „GOLF“ and the goods and services in classes 28 and 35. There is a descriptive message.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute grounds Case law T-307/09, NATURALLY ACTIVE It is clear that the relevant public will perceive the semantic content of the word as an indication to the consumer of a characteristic of the goods and not as an indication of the commercial origin of the goods. The Board was right to refuse registration of the mark applied for in classes 3, 5, 35 and 44.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Absolute grounds OHIM practice There is no automatism that a sign descriptive of a characteristic of the goods is also descriptive for the retail services in relation to these goods.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity OHIM practice 1. Retail services vs any kind of goods => not similar. Different nature, purpose, neither in competition nor complementary. 2. Retail services related to the sale of particular products are similar to these particular products. 3. Retail services related to the sale of particular goods and other goods are, in principle, not similar.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity OHIM practice 4. Retail services vs retail services in general or related to the sale of specific goods => identical. 5. Retail services related to specific goods vs retail services related to other specific goods: similarity depends on the circumstances (distribution channel) involved.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity OHIM practice - searches For searches performed by the OHIM ex Article 38 CTMR, no cross reference between goods and retail services in class 35.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity Case law T-116/06, O STORE - Clothing vs retail of clothing Similar in distribution channels of the services and the goods and complementary (the goods are indispensable to, or very important for, the provision of the services) Not similar in nature, purpose or method of use.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity Case law T-116/06, O STORE - Clothing vs retail services Similar because the retail services can be related to all goods.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity Case law T-116/06, O STORE – clothing vs retail services concerning eyewear Not similar, no complementarity.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity Case law T-162/08, MISSAKO - retail services in shops vs business advisory and management services, business organisation consultancy, business research; franchising; import-export of goods Retail services without any specification as to the goods are too vague to enable a proper comparison with the class 35 services.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Opposition - Invalidity Case law T-138/09, RIOJAVINA – wines vs retail services in relation to vinegar Low degree of similarity in view of the close link between any product and its marketing; as wines and vinegar are similar, so are wines and retail services in relation to vinegar.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Conclusion Classification For the purposes of registration of a trade mark for retail services, it is not necessary to specify the service(s) in question. However, details must be provided with regards to the goods or types of goods to which those services relate.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Conclusion Absolute grounds There is no automatism that a sign descriptive of a characteristic of the goods is also descriptive for the retail services in relation to these goods.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Conclusion Opposition/Invalidity – similarity 1. Retail without specification vs specific good (eg. Clothing) => dissimilar 2. Retail of specific good (eg. Clothing) vs the same specific good (eg. Clothing) => similar 3. Retail of specific good (eg. Clothing) vs not identical specific good (eg. Footwear) => dissimilar

Office for Harmonization in the Internal Market (Trade Marks and Designs) Conclusion Opposition/Invalidity – similarity 4. Retail without specification vs retail without specification or retail of specific good (eg. Clothing) => identical 5. Retail of specific good (eg. Clothing) vs retail of different specific good (eg. Footwear) => depends on distribution channels

Office for Harmonization in the Internal Market (Trade Marks and Designs) Conclusion Opposition/Invalidity – similarity 6. Retail without specification vs other services in class 35 or any other class => dissimilar 7. Retail specified (eg. Clothing) vs other services => depends/normal criteria.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Conclusion Opposition/Invalidity – likelihood of confusion The risk of confusion is unlikely between retail services on the one hand and particular goods on the other, except in very particular circumstances, such as when the respective trade marks are identical or almost so or well- established in the market.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Questions Questions/problems encountered? Is it correct to make a distinction between sales and retail services? Misunderstanding of what retail is.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Questions Questions/problems encountered? Goods or types of goods that are too vague: Retail services relating to souvenirs, collector‘s articles. Nature of the place sufficiently specific? Retail services relating to bakers vs retail services of a supermarket.

Office for Harmonization in the Internal Market (Trade Marks and Designs) Questions If there are both commodity trade marks and retail (wholesale) service trade marks at the same time on the same merchandise, how to distinguish them?

OHIM Contact Information:  (+ 34)  (+ 34)   Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa, 4 E Alicante SPAIN