| Change
in the law of trade marks for retail services |
| Class 35 UK or
Community registrations for the sale of goods from an
internet site, a shop or via mail order, (which are
commonly referred to as retail services) could be affected
by a recent decision from the European Court of Justice
called Praktiker. |
| This decision
held that a detailed list of the goods
which are to be sold must be in the registration for
any trade mark for retail services. Up until now, the
UK Trade Mark Registry and the Community Trade Mark
Office permitted registrations to specify the place
from which the goods would be retailed (for example
a department store, or a pharmacy, or a general merchandise
website) and merely state that a "variety of
goods" were to be sold rather than provide
an exact list of the goods themselves. |
| Clients of this practice do not need to take action, since their registrations were obtained with a detailed list. The advice below is for the benefit of any visitors to our site: |
| The list of goods
does not need to be that detailed. For example, in Praktiker
itself, the Court indicated that “ retail trade
in building, home improvement and gardening goods for
the do it yourself sector“ would be detailed enough.
But action does need to be taken to ensure that a detailed
list is actually in the registrations affected by this
decision, and if not, |
| A) |
Amend (the official
term is part surrender) the existing registrations;
otherwise they might not be enforceable on grounds that
their scope is not written clearly enough for the courts
to interpret what use will infringe them. If the amendment
process is straightforward, there will be no official
fees to pay, only time spent in dealing with the Registry
or the Community Office up until the time the amendment
is completed OR |
| B) |
a fresh
registration. Even with an amendment, existing registrations
might still not be enforceable, on grounds that the
relevant time for interpreting their scope is when the
registration was first sought, and no subsequent amendment
can be taken into account, even if it is brought about
by a subsequent change in law. There would be official
fees to pay, £200 for a UK registration, and Euros
1750 for a Community registration, in addition to time
charges. |
| Option A is the
one recommended by both the UK Registry and the Community
Office. But neither body deals with enforcement
of registrations, (that is done by the courts) so their
view is not the authoritative one. Option B is the one
that I would have to recommend, since it is the only
sure thing. |
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