• UK NEWS

    What’s in Store for Retailers

    People have been making a living from offering their services for thousands of years. It is only comparatively recently, however, that businesses have been able to obtain registration rights for their service marks. In the UK, service mark registrations were introduced in 1986. Before that, the best that a company could do was register its service marks for related goods. This is evident from earlier registrations such as BBC for television sets and Hertz for cars.

    Not all services were protectable by registration, because of the requirement that the service had to be one provided "for money or money’s worth". In particular, retail services were not considered to qualify. According to the Court of Appeal in Dee Corp’s application (1990 RPC 159), retailers made no separate charge for their services, which were thus considered to be merely ancillary to the trade in goods.

    Retailers were therefore left to rely on registrations for the goods which they sold, apart from any rights acquired through use under common law.

    A recent decision by the Second Board of Appeal at OHIM (Giacomelli Sport) seems to have acted as a catalyst for change. In that decision, the Board pronounced that it could see no reason why retail services should not be registrable, since the objections to it did not have a sound legal basis and were more in the nature of policy preferences. In the wake of this OHIM decision, the UK Office recently announced that it will now accept retail service mark applications. Not all retail services will be allowed. For example, a factory shop will probably not be regarded as a retail service. Also, services which essentially consist of promoting one’s own goods will generally not be acceptable. Other forms of trade, such as wholesale, mail order, on-line or via the internet will be acceptable, if they are provided "for the benefit of others".

    As regards relative grounds of refusal, the Office has indicated that in examination it will generally only raise objections as between certain goods and the retailing of those goods if:

    • the retailer is one that specialises in the particular goods, or

    • retailers of those goods typically sell own brand products, or

    • the earlier mark is highly distinctive.

     

    Additional factors such as reputation or special trade practices will be taken into account in opposition or invalidity proceedings, but not during examination.

    So far as claiming retail services is concerned, the UK Office have opted for the excruciatingly turgid definition suggested in the Nice Classification guide, namely:

    "the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a … or by means of …".

    In the light of the Giacomelli Sport decision, it is hoped that OHIM will eventually take a more pragmatic line, and that expressions such as "retail services of a department store" or "retail services in respect of food and beverages" will be viewed as acceptable.

     

    Comment

    An English High Court Judge (Mr Jacob) recently made some thought-provoking comments on retailers’ registration rights in a case involving the trade mark Crate & Barrel (see page10 of this edition of Make Your Mark). The case itself concerned an application for summary judgement in respect of alleged infringement of a UK registration in Class 21. In discussing the application, Mr Jacob remarked, that in his view, only a "trade mark obsessed lawyer" would think that the sale of goods in packaging carrying a retailer’s mark would be use of that (retailer’s) mark in relation to the goods. Although the Directive does not go into use "in relation to goods", he doubted whether the sale of other people’s branded goods by retailers in their packaging could constitute genuine use sufficient to maintain a (goods class) registration. The lesson from this is clear. Retailers, wholesalers and anyone else whose business consists essentially of trading in third party goods should take advantage of the new practice in the UK and immediately apply for service mark protection. They should certainly not continue to rely solely on existing registrations covering goods.