Intellectual Property: The ECJ Extends the Use of Trade Marks to Goods and Services

The European Court of Justice ("ECJ") ruled in Praktiker Bau- und Heimwerkermärkte (C 418/02) that a trade mark that is now in use by a company on its goods can be extended to cover the services provided by this company.

A DIY retailer Praktiker Märkte, filed for registration with the Deutsches Patent und Markenamt (the German Patent and Trade Mark Office) of the mark PRAKTIKER in respect of the slogan 'retail trade in building, home improvement and gardening goods for the do-it-yourself sector.' However the German Patent Office refused registration of this slogan on the grounds that the concept of 'retail trade' did not denote independent services having autonomous economic significance.

Praktiker Märkte brought an appeal before the Bundespatentgericht (Federal Patents Court) against the rejection of its application. The company argued that the economic trend towards a service society necessitated a re-appraisal of retail trade as a service. The consumer's purchasing decision would increasingly be influenced not only by the availability and price of a product, but also by other aspects such as the variety and assortment of goods, their presentation, the service provided by staff, advertising, image and the location of the store, etc. Such services provided in connection with retail trade enabled retailers to be distinguishable from their competitors. They further argued that such services ought to be eligible for protection by service marks.

The case was referred to the ECJ who concluded that:-

Retail services should be registered as trade marks if the services differ from the goods under which the trade mark is sold; and The contents of the services provided by the retailer must be specified so as to enable consumers to know in concrete terms (1) what the service consists of (expressions such as "retail trading" or "retail services" are not explicit enough) and (2) what goods or types of goods the services relates to.

Comment: This is a significant decision for trade mark owners.

If you require further information contact us.

Email: enquiries@rtcoopers.com

© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Intellectual property law firm advising on patents, trade marks, copyright, designs, pharmaceutical law, biotechnology law, patent attorneys, patent lawyers, copyright, know-how, trade marks, trademarks, copyright solicitor, copyright law, IP lawyers, IP law Firm, IP valuations, IP solicitors, freedom to operate copyright lawyers, patent solicitors, branding,intellectual property lawyers, intellectual property solicitors.

For any further information, emailus at enquiries@rtcoopers.com. Visit our website at http://www.rtcoopers.com

---

The Wall of Honor

Many Americans have children, fathers, mothers, grandparents, other family members... Read More

Should Judgeships Be a Political Event?

Thought of the day; Questions about the judicial system. If... Read More

Quick Thought on The Flow of Fuel and Costs

Without the flow of fuel our very mobile society comes... Read More

The Sarbanes-Oxley Act

The Sarbanes-Oxley Act Was created on July 30th 2002, by... Read More

The Morality of Child Labor

From the comfort of their plush offices and five to... Read More

Government Overregulation of Broadcast Content Could Backfire

Rush is right! The government's stepped up bid to regulate... Read More

Emminent Domain May Hit Close to Home

IN A DAY AND AGE where one voice screaming among... Read More

On The Privatization of Social Security

Reform Social Security has been talked of Capital Hill for... Read More

Peace in the Middle East

Peace in the Middle East - whoa that is a... Read More

We Must Register AIDS Carriers and Homosexual Men

It is a law that we register deadly weapons with... Read More

The Economic Giant-- A Closer Look at China

IT'S NO LONGER NEWS THAT CHINA IS BECOMING A MAJOR... Read More

Anarchy: Law, Order, and Authority

[Author's Note: Another essay that I wrote on notebook paper... Read More

PTO - Patent and Trademark Office needs complete overhaul

Recently in Maine, I talked with a gentleman and we... Read More

John Roberts ? Supreme Court Nominee

President Bush's selection of the Hon. John Roberts is an... Read More

How Does the US Congress Really Work?

Many people do not understand politics very well. They often... Read More

Ohio Department of Transportation; Sector Economic Reality

Ohio's transportation sector seems to be strong, even with Ohio's... Read More

Army recovers terrorists? bodies from avalanche-hit areas in South Kashmir

As the death toll in the avalanche-hit Jammu and Kashmir... Read More

Revitalizing The Power of the Baby Boomers

As baby boomers, we have been spoiled all of our... Read More

UK Elections on the Horizon

With elections on the horizon and Blair looking tired and... Read More

Freedom on the Internet

Throughout all recorded history on our lovely little planet, Earth's... Read More

Thoughts Born of Tragedy ...

..."history may judge us to be the real bully if,... Read More

Arson Neighborhood Mobile Watch Program for Summer Fire Season

Due to the bizarre weather patterns this winter California got... Read More

FTC Hurts Franchising Consumers

Last Summer the Federal Trade Commission came out with a... Read More

The Criminality of Transition

Lecture given at the Netherlands Economic Institute (NEI) on 18/4/2001Human... Read More

Arrogance Of Terror

The man on the tape raised his hand, pointing a... Read More

The Unborn and Cloning

The UnbornWith all this cloning in the news one can't... Read More

The Civil War - FOGC

Thomas Jefferson wrote a letter to Lafayette in 1823 that... Read More

Whose Afraid of the Government; Whose the Government Afraid of?

We need a government that can be as responsive to... Read More

Dafur Emergency: A Challenge To Civilisation

With pain rocking through my whole body today, I cast... Read More

Federal Trade Commission Will Not Monitor MLM Companies

Having been to every city in the country over the... Read More

What is the Filibuster-Breaking Nuclear Option?

What is the so-called "nuclear option" that Senator Bill Frist... Read More

Russian State Administration Gives New Facelift to Oil and Energy Resources

With the world's largest oil and natural gas reserves, second... Read More

Mexico; Look What We Did

The number-one question people ask us is, "What possessed you... Read More