PRACTICE ROUND-UP

UK

Retail Services: In the autumn 2005 Make Your Mark, we predicted that, following the ECJ’s decision in Präktiker, retail services applicants would have to identify their goods, but that general language would suffice for department stores, whose wide-ranging stock cannot in any practical sense be fully listed.

The new official U.K. practice confirms this. It is no longer necessary to specify the trade channel (eg supermarket, department store, specialist retail outlet, mail order, electronic shopping, etc). However, the goods must be indicated in at least a broad way (ie “food and drink” for supermarkets).

For department stores, general terms corresponding to departments are acceptable, such as beauty products, hand tools, domestic electrical and electronic equipment, jewellery, luggage, furniture, textiles, clothing, footwear, toys and games and sports equipment.

It is understood that OHIM is changing its practice similarly.

Existing registrations not compliant with Präktiker may be held wholly or partially invalid. It is unclear whether a registration may be saved in part if a restriction is offered after an invalidation is filed. Retailers and their advisors should consider carefully whether to head off such risks by entering partial surrenders now.

Disclaimers: The High Court has confirmed that disclaimers are relevant not only to infringement, but also to conflicts between applications and prior registrations (General Cigar Co. Inc. v Partagas y Cia. SA [2005] FSR 45).

It found the earlier CIFUENTES WINKS not similar to CIFUENTES, as the sole overlapping element (CIFUENTES) had been disclaimed in the earlier mark.

Tribunals will not discount the disclaimed element entirely, however, if there is an overall similarity taking the disclaimed element into account (eg CIFUENTES WINKS and CIFUENTES BLINKS).