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European Concept of Services for Trademark Registration Purposes

By Martha L. Arias

Registration of trademarks is under the EU Member States' jurisdiction but substantive conditions to acquire trademark rights is a matter of community law.  Indeed, Council Directive 89/104/EEC of December, 21, 1988, was enacted to approximate substantive trademark laws among the EU Member States.  This Directive was not implemented to create a common trademark law system to be applied by each community member; instead it aimed to approximate countries' trademark laws and make them functional in the EU.   Yet, conflicts of laws on substantive trademark law concepts may arise even though most EU members are signatories to WIPO agreements (including the Paris Convention) and despite the Council's efforts to harmonize these various legislations. For instance, in 2005, there was a debate on the concept of services and its requirements for trademark registration purposes that is explained in this article. 

 

There is no specific community definition of the word "services" for trademark purposes but the Nice Classification, Class 35, provides examples of services including advertising, business management, business administration, and other office functions.  It also states that this classification does not include services rendered by enterprises whose primary business is the sale of goods, but Class 35 does include "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods."  Consequently, according to Nice Classification, class 35, there are some enterprises providing primarily services but engaged in some goods trading.  The Nice Classification does not have binding force on the Member States but it is persuasive when defining services for trademark purposes.    

Directive 89/104/EEC, article 2, defines a trademark as any sign capable of being represented graphically, particularly words, and including personal names, design, letters, numerals, shapes of goods and their packaging, "provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings." Registered trademarks confer exclusive rights to their owners and entitle them to prevent third parties' unauthorized use (article 5(1)). According to article 4(1) of the same Directive, a trademark cannot be registered or, if registered it will be invalid, if (1) it is identical to other trademark, or goods or services for which the trademark applies or is already registered or protected; and (2) because of its identity or similarity to the already registered trademark, or to its goods or services, there is a likelihood of confusion on the public, including likelihood of association with the registered trademark. 

The European Court of Justice (ECJ) was asked to rule on "whether the concept of services' referred to by the directive, in particular in Article 2, is to be interpreted as including services provided in connection with retail trade in goods and, if so, whether the registration of a service trade mark in respect of such services is subject to the specification of certain details."  The case emerged when a German entrepreneur tried to register a mark on what he called "retail trade in building." The service referred to home improvement, gardening, and do-it-yourself techniques that also involved the sale of some consumer goods.  The German application was denied on the basis that the services had not independent economic significance and were secondary to the principal trade activity. 

The ECJ concluded that it could only provide a common interpretation of the word "services" (especially since the Nice Classification was not mandatory upon the Member States) and it was up to each State to set the requirements for the registration of trademark services.  The ECJ held that article 2 of Directive 89/104/EEC covers services provided in connection with retail trade in goods.  However, "the applicant must be required to specify the goods or types of goods to which those services relate by means, for example, of particulars such as those contained in the application for registration filed in the main proceedings."  Therefore, applicants do not need to describe the specific services since they will depend on either the Nice Classification or any specific classification adopted by national legislation, but they do need to list the goods or type of goods to which those services relate.  (ECJ, case C-418/02).

 

Full post as published by IBLS Internet Law Blog on August 25, 2008 (boomark / email).