The IPKat has received another comment on the Praktiker case (see yesterday's two blogs on it), this time from his learned and esteemed friend Udo Pfleghar (Rechtsanwalt, Boehringer Ingelheim GmbH, formerly of OHIM). Udo writes:
Quickly (and probably quite differently from the official translation), the conclusions (and suggested responses) of the Advocate General may be translated as follows:The IPKat is tremendously grateful to Udo (as he is to Tibor Gold), who have done much to elucidate the issues facing the ECJ and to help spark general debate before the ECJ gives its final ruling later this year.
1. Services provided in the context of retail trade of goods, which are distinct from the actual sale and are identifiable, may be considered to be services within the meaning of Directive 89/104 for which a service mark may be registered.
2. The services of a retailer in the context of retail trade of goods, for which a service mark may be registered, are to be clearly specified in such a way in accordance with the Directive that it is discernable what these services actually consist of. Terms such as "retail" or "retail services" are not sufficiently detailed to describe the services performed in this manner. The registration of a mark for services provided in the context of retail trade of goods must also make it possible to determine to which goods or which types of goods these services relate.
3. Concerning similarity within the meaning of Articles 4(1)(b) and 5(1)(b) of the Directive, no line can be drawn between the services in the context of retail trade of goods and other services carried out in connection with the sale of goods or the goods sold by the retailer themselves.
As far as point 3 is concerned, AG Léger argues that the scope of protection of such retail service marks would be best limited by precisely and completely defining the services and the goods to which the services relate. He therefore disagrees with the German Federal Patent Court which fears that the protection of such marks could be too broad if no difference was made between retail services on the one hand and other services carried out in connection with the sale of goods (such as financing and maintenance services) or the goods themselves on the other hand.
As a sideline and of limited relevance, both the AG and the German Federal Patent Court employed the terminology "Wareneinzelhandel" ("retail trade of goods") instead of "Einzelhandel", which would simply mean "retail trade". While this would appear to be a tautology, the reason is probably that the Court was trying to avoid the lengthy wording of the application which is for "Einzelhandel mit Bau-, Heimwerker- und Gartenartikeln und anderen Verbrauchsgütern für den Do-it-yourself-Bereich", which translates as: "retail trade with construction, home improvement and gardening articles and other consumer goods for the do-it-yourself sector". This description of the goods, or rather of the types of goods, at least would seem to satisfy the criteria laid down by AG Léger in the response to question 2. However, the applicant would still have to specify what the services actually are.