In eight months of birth, the definitive allowance of retail services under trademark registrations in the European Community has lead the OHIM President to further intervene and the Opposition division to show its difficulties in handling this new possibility.
Registration of retail sale services Community trademark was first granted by the OHIM Board of Appeal in 1999. Since then, the question on whether retail sale services should mature into registration had on a national basis been discussed in Europe until the Court of Justice of the European Community (CJEC) decision PRAKTIKER of July 7, 2005.
The CJEC then ruled that retail services were allowed to registration under general wording such as bringing together of a variety of goods, enabling consumers to conveniently view and purchase those goods but provided that the goods or types of goods to which those services relate be specified.
Since then, the OHIM President has some further clarified the situation of retail sale services trademarks (1) but the Community case law adopts an ambivalent position as to the similarity of retail services trademarks with products trademarks (2).
1. Clarifications of the OHIM President on retail sale services trademarks
In a Communication dated October 31, 2005, OHIM President brings further elements on retail sale service trademarks with regards to, firstly, the wording of the goods or type of goods to specify in relation to retail sale services.
It is not required to specify the goods concerned by the retail sale services in such a way that they would be considered as properly claimed along with the goods class they would belong to. Any reference to the goods, even in a broad wording, is accepted as long as it is readily ascertainable. Making only reference to a class number of products (for instance retail sales of goods of class 28) is however not accepted by the OHIM.
Secondly, trademarks covering only retail sales, and other sale services such as wholesale, internet shopping or catalogue or mail order services without any listing of the products concerned by such services, will simply not be considered as similar with any goods.
The OHIM position, along with what the CJEC ruled this summer, should then lead holders of such trademarks to amend their specification so as to have products recited in connection with said sale services and be in a position to act efficiently against later trademarks. This should of course apply not only to Community trademarks but also to national ones, whether they are opposed before the OHIM or before the national Trademarks Office.
In the context of the use requirement, the President of Communication states that earlier rights invoked in an opposition proceeding or Community trademarks attacked on revocation will be considered as registered or limited in relation to retail services for the only goods which have actually been sold at retail.
The requirement of specifying the products which retail services relate to, should logically bring to believe that a similarity between such services and coinciding products would be admitted unconditionally. This outcome is however weakened in practice in light of the OHIM recent opposition practice.
2. Similarity in the OHIM case law between retail sale services trademarks and products trademarks
The first decisions ruling the similarity between retail sale services trademark and products trademarks show that the OHIM adopts two contrary positions depending on the Examiners in question. Two decisions speak for themselves.
On December 20, 2005, the Opposition Division considered inthat the risk of confusion between retail service relating to clothing, footwear and headgear claimed in class 35 under the contested Community trademark application was incompatible with clothing, footwear, headgear of the earlier mark.
This decision was based on the point that there were no exceptional circumstances, such as the identity or almost identity of the respective trademarks or the well establishment of the earlier trademark enabling to retain a similarity with the second one.
The outcome is particularly open to criticism. The OHIM simply adds conditions that had never been required when assessing the similarity between products and services. There is no reason for applying stricter criteria that is either the well-known character or an identity of the sign, when retail sale services are in question. The CJEC had in no way considered that retail sale services trademark would have limited scope of protection. Applying such criteria would be nonsensical in light of the CJEC requirement, confirmed by the OHIM President, to specify the products that retail sale services relate to.
Three days later, inthe Opposition Division ruled that wholesale and retail services in respect of furniture and parts thereof, the bringing together – for the benefit of others – of a variety of goods, especially furniture, (excluding the transport thereof), enabling customers to conveniently view and purchase those goods are similar with beds, bed linen and mattresses.
The Examiner retains this time that the applicant made a point in specifying « wholesale and retail services in respect of furniture» and that Â« the variety of goods » which services claimed were relating to shall include « bed linen and mattresses ». The OHIM secondly adds that in the field of furniture and textile goods, the manufacturer and the wholesaler are not always clearly separated.
Whereas the solution here is more satisfactory, the reasoning adopted by the OHIM remains quite surprising. Considering bed linen and mattresses as listed within the broader category of the variety of goods is somehow surprising in the light of the OHIM President strict position to deny similarity for non readily ascertainable products. Moreover, the Examiner highly considered the habits of the consumers whereas this could rather be seen as an accessory element when comparing the products and services in question.
The past difficulties in registering retail sale services trademark now leave the door open to new difficulties in conflictual situations.
The OHIM apparent ambivalent movement to deny similarity to such trademarks with potentially similar products prevents trademark owners from acting administratively whereas a product trademark is a reliable basis for successfully acting before the Court against activities rendered under a company name or a sign board.
The CJEC decision of last summer brought to only opt for trademark searches in classes of products concerned and in class 35 but not to cover class 35 in the application. However, the OHIM current hesitation leads now to also claim class 35 with the contradiction that it is required to specify the products to which retail services relate, even if such products are also claimed per se in the other classes of the application.