PRACTICE DIRECTIONS – TRADE MARKS – REGISTRATION OF RETAIL SERVICES

The Registrar of Trade Marks issued a Practice Direction detailing a change of practice in allowing applications to register trade marks for certain types of retail services.

(1) in view of the confirmation by the ECJ that the essential function of a trade mark is to guarantee to the consumer that the goods services offered under a mark are controlled by a single undertaking responsible for quality; (2) the UK retailers that have substantial goodwill in their names, so that they function as a trade mark for services comprising the range, display and selection of goods, and (3) the decision of the Office for the Harmonisation of the Internal Market, Second Board of Appeal that “retail services” can be registered as a Community trade mark, there will be no objection to specifications describing the bringing together of goods for the purposes of convenient viewing and selection by customers, provided that the nature of the retail service and market sector, where applicable, are indicated. Although it is doubtful whether a company promoting its own goods via a catalogue or website could provide a registrable service, applications would be accepted from services that bring together other traders’ goods, provided some indication is given of the relevant field of activity. A provisional view suggests that there will only be a likelihood of confusion between the retailer’s mark and a mark for related goods if the retail service specialises in bringing together goods for which a conflicting mark is registered in a goods class or where it is common trade practice for retail businesses to produce their own brand goods.

PRACTICE DIRECTION (TMR: CHANGE OF PRACTICE ON RETAIL SERVICES) [2001] R.P.C 2, Allan James, TMR

“Current Law” March 2001