Retailing of services – new guidelines from UKIPO
The United Kingdom Intellectual Property Office (UKIPO) has issued guidance (PAN 1/15) to confirm 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.
In Netto Marken 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.
The UKIPO has advised that 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 make amendments.
Clarity and Precision
Given that ‘bringing together of services’ is an activity which is entitled to trade mark protection, UK classification practice is being updated accordingly. Currently, it has only been permitted to bring together those services which are likely to be provided in the context of a shopping centre. The UKIPO’s new practice will accept claims to ‘the bringing together of… “almost any service, subject to that claim meeting the overall requirements for clarity and precision”.
The UKIPO has produced example specifications which will now be deemed acceptable. These include:
- 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 important 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 any claim to the retailing or ‘bringing together’ of services must be worded in this manner.
The UKIPO is keen to stress that the CJEU’s ruling is not to be interpreted as providing a means for obtaining duplicate 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. Where is it not clear whether a specification denotes the bringing together of services or the provision/advertising of those services per se, an objection is likely to be raised, and the applicant invited to amend its specification in accordance with this guidance. With this regard, the UKIPO have made it clear that phraseology such as ‘retail services connected to the sale of takeaway services’ or ‘retail services connected to the sale of legal services’ will not be accepted as these phrases do not make a sufficient distinction from the underlying services themselves rather than their ‘retailing’.
The Netto decision and the UKIPO’s new guidelines with regards the retailing of services would appear to be particularly significant for online retailers and service agglomerators where the retailing of services has grown over the years and is a natural progression from the decision to allow the registration of the retailing of goods over a decade ago in the European Union.