Only in recent years has it been possible to register a trade mark for “retail services”. But it’s not quite as simply as that: the UK Trade Mark Registry has recently changed its approach to how those services should be described when applying to register.
Topic: Brands
Who: The Trade Marks Registry
Where: London
When: November 2005
What happened:
The Trademarks Registry issued a Practice Amendment Notice ("Notice") on the registrability of retail services as trademarks.
This takes account of the European Court of Justice's decision in the recent Praktika case. The Notice explains how its practice has changed as a result, and the effect on pending applications and existing registrations.
It was not until relatively recently that it became possible to register a trademark for "retail services" at all. Now this has become accepted practice and the relevant class which an application must be filed in is class 35. The trick is to ensure that the specification wording is drafted in a way that will be acceptable to the registering authority. The specification is critical because it delineates the extent of the monopoly right that the trademark registration will confer upon the proprietor.
The officially approved wording for the specification for an application to register a brand for retail services was "the bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods." The Registry's practice was not to object to this description provided that the specification identified the precise nature of the retail service being provided, such as supermarket, department store or electronic shopping.
Following the ECJ decision in Praktika, the Notice now states that it is necessary to specify the goods, or types of goods, in all cases, although it adds, somewhat confusingly, that a mere, "indication" of the types of goods concerned will be sufficient.
Examples of what will now be acceptable specifications are set out in the Notice. These include:
- 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."
- electronic shopping retails services connected with [indicate goods or types of goods]."
There is also guidance on what will not now be acceptable, such as:
- 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 [as the expression "department store" does not identify the types of goods].
Why this matters:
Particularly in the on-line space, registrations of marks in respect of retail services are increasingly key and all those involved in the retail sector should bear these new guidelines in mind.
Currently pending applications that do not conform to the revised practice will require amendment and applicants will be given an opportunity to make such amendments. Owners of existing retail services registrations may request a restriction of their specifications so that they comply with the new practice and will not be vulnerable to proceedings for invalidity.
