The guidance has been issued to take into account the decision in Case C-420/13 Netto Marken-Discount AG & Co. KG v Deutsches Patent-und Markenamt. This case confirmed that the retailing of services is a commercial activity capable of protection provided that the description of services is formulated with sufficient clarity and precision to ensure that it is possible to discern which services are being brought together or retailed. The requirement for clarity and precision is in line with the decision in Case C-307/10 IP Translator (see our previous article on this case).
The UKIPO has provided some examples of the type of wording that will be considered acceptable, including:
"The bringing together, for the benefit of others, of a variety of legal services, enabling customers to conveniently view and purchase those services".
As the UKIPO points out, this description uses established wording to frame the services being brought together and describes the retail activity itself. Then it specifies the type of services being retailed in terms which are understood and recognisable in their own right. It is not compulsory to offer context, such as the location or manner of sale, e.g. "in a retail store", "in a wholesale outlet" or "from an internet website" but the Registrar encourages use of such descriptions in the interests of ensuring maximum clarity and precision.
The UKIPO also offers some examples of wording which will not be acceptable, either because the wording fails to provide a clear distinction between the retailing of services and the actual provision of those services or because the services which are being brought together are not described with sufficient clarity and precision.
It also draws a distinction between the retailing of services and the mere selling or advertising of one's own goods or services. This practice should not be interpreted as being a means of obtaining duplicative or alternate protection for the latter. Where the description of services in an application is unclear on this point the Registrar will issue an objection and the applicant will be invited to amend its specification in line with the new guidance.
This is welcome guidance for trade mark owners and legal practitioners alike.