European Union (EU) - European Court of Justice (ECJ): Registration of marks for Retail Trade Services

In Praktiker Bau- und Heimverkermärkte AG (Case C-418/02), the ECJ dealt with the issue of acceptable wording for specifications for service mark applications covering retail trade services.

In this case, a German company filed an application for the trademark PRAKTIKER for services reading, “retail trade in building, home improvement, gardening and other consumer goods for the do-it-yourself sector.” The German Patent and Trademark Office rejected the application on the ground that trademark protection could be obtained only for the goods marketed. The concept of “retail trade” did not denote independent services having autonomous economic significance, but related only to the distribution of goods. The economic activities, which resulted from the distribution of goods, i.e. purchasing and selling, were not services for which a trademark could be registered.

On appeal, the ECJ held that “trade” includes all activities carried out by the trader for the purpose of encouraging the conclusion of a transaction with the trader rather than with a competitor. To register a trademark for retail trade services, it is not necessary to specify the services. The court held that as a condition of registration, the applicant should specify the types of goods to which the services relate. The court noted that the description of services provided by the German Company adequately described the goods to which the services related i.e. “home improvement, gardening and other consumer goods for the do-it-yourself sector.”

This decision is important as it clarifies that retail trade services should now be registrable in any Trademark Office of the European Union member states if the wording is appropriate.