Retail services proteced as trademark: Does this include the Apple flagship store or an online shop, and also a trading platform? The German Federal Patent Court now presented his view as a guiding principle decision.
According to trademark law in the European Union, a graphically representable sign can be placed under trademark protection if it helps to distinguish goods and services of one company from those of other companies (see Directive 2008/95/EC on the approximation of trademarks in the EU).
However, in the case of a retail service the purpose is to sell goods to the consumer. This retail trade involves, in particular, the selection of a range of goods and the offer of various services which are intended to induce a consumer to conclude the contract of sale for these goods with this trader instead of with one of his competitors. In this respect, a retail service is not dependent on the origin of the goods or which and how many brands are represented in its offer.
Retail services as a trademark
The situation is different for a retail service under trademark protection. The admissibility of trademark registrations for the service of a retailer has been recognized since the Praktiker decision (EU:C:2005:425) of 2005 of the European Court of Justice (ECJ). However, the ECJ has so far not made a clear statement as to whether the protection of a retail trade mark only covers the retail trade with third-party goods/services or also that with own products.
Therefore, the Federal Patent Court (in German: Bundespatentgericht (BPatG)) considered the specific activity of a retailer for the assessment of a retail service as a trademark. This consists in facilitating the sale of goods produced by third parties by means of presentation measures including consultation, but not in the sale itself, explained the Federal Patent Court in a recent landmark decision.
Guideline decision for retail services with own goods
The sale of own goods is not a service within the meaning of Class 35; rather, it is covered by the trademark, the BPatG held as a guiding principle. Only the retail trade with third party goods is to be regarded as capable of being registered as a trade mark, because a trading activity requires the procurement of goods from third parties.
The BPatG stated that an online trading service does not prevent this, but – regardless of whether it is online trading or stationary trading – trading with one’s own goods does not fall within the scope of protection of a retail service trade mark. Likewise, trade in goods of the own licensor is not eligible for trademark protection (in connection with acts of use of a licensee according to § 26 para. 2 MarkenG old version in connection with § 158 para. 5 MarkenG). Even if a trader, when selling his own goods via an online shop, offers a particularly attractive presentation, free telephone advice on the product or particularly simple ordering options, this alone serves to enhance the value of the product he has manufactured as such and is an integral part of the sale, the BPatG specifically clarified its decision with regard to online trading.
In the context of online trading please also notice our article: Danger for design protection: Products offered online belong to the previously known designs
The BPatG also concluded from the ECJ’s remarks in the decision on the Apple Store that trademark protection cannot extend to the sale of one’s own goods because this does not include “services” within the meaning of Art. 2 of the Trade Mark Directive 2008/95.
Apple Flagship Store as a retail services trademark
Therefore we take a closer look at the Apple Store decision of the ECJ. The representation of an Apple Flagship Store was registered in 2010 by the USPTO as a three-dimensional trademark for “retail services related to computers, computer software, computer peripherals, mobile phones, consumer electronics and accessories and related product demonstrations”. That representation showed the typical retail outlets which Apple refers to as the Apple Flagship Store, in the form of a multi-coloured drawing.
The international registration of this trademark was not so easy, in 2013 the DPMA (German Patent and Trademark Office) refused to extend the protection to Germany on the grounds that the depiction of the point of sale was nothing more than the representation of an essential aspect of the commercial services of this company and this could not be understood as an indication of the commercial origin of the goods. Apple filed an opposition and finally, in July 2014, the ECJ ruled on this interesting retail service mark.
The representation of the equipment of a sales outlet, such as an Apple flagship store, can be registered as a trademark under certain conditions, the ECJ ruled. Since the Apple Flagship Store was represented in a graphic representation by means of a totality of lines, contours and shapes, it could be a trademark, the ECJ stated. As with any trade mark, the prerequisites for this were that the sign had to be distinctive and that the sign was not descriptive of the characteristics of the goods and services concerned.
In addition, the ECJ added in RN 20 the requirement that a significant departure from the norm must be demonstrated where the sign consists in the representation of the configuration of the spatial surroundings in which the services for which the mark is sought are provided.
With regard to the registration of the retail service as a trademark, the ECJ ruled that a sign such as the Apple Flagship Store – if there is no classical ground for refusal such as lack of distinctiveness – may also be registered for services, provided that these services are not an integral part of the sale of these goods. In the trade mark application, Apple had mentioned, inter alia, as services the organisation in such stores of demonstrations of the goods exhibited there by means of seminars.
The representation of the equipment of a sales outlet in the form of a drawing alone could therefore be registered as a trade mark for services, the ECJ ruled, if these consist of services relating to goods but do not form an integral part of the sale of those goods themselves, provided that such representation is capable of distinguishing the services of the applicant from those of other undertakings.
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Judgement of BPatG (in German)
Very interesting article. Regarding Apple Flagship store case, could you please tell me what is the number of the BPatG decision (after ECJ ruling)?
Katja Wulff says
thanks for your friendly comment. We would be happy to provide you with the relevant reference number for the BPatG ruling, it is 29 W (pat) 41/17.
The team of Meyer-Dulheuer MD Legal Patentanwälte PartG mbB