The German Federal Patent Court makes it clear that trademark protection for online retail services in class 35 does not cover the offering of goods of the retailer himself.
In two decisions of October 4, 2019 (28 W (pat) 3/19) and of January 20, 2020 (29 W (pat) 41/17) the 28th and 29th Senate of the German Federal Patent Court had to deal with the genuine use of two German trademarks for services in class 35. Whereas the 28th Senate held that a genuine use of a trademark for online retail services in class 35 is also to be found when the proof of use only relates to the distribution of the trademark owner’s own goods, the 29th Senate contradicts this view: Retailing with the trademarks owner’s own goods does not count as service as covered by a trademark, given that the activities protected by a trademark are different for goods than in relation to retail services; only trademarks protected for goods cover the offering of the own goods of the trademark holder; trademarks for retail services on the other hand also cover the activities of the presentation of the products, such as putting together an assortment of goods, which makes it easier for the customer to make its decision, which products it is going to buy.
Merits of the cases
The 28th Senate as well as the 29th Senate of the German Federal Patent Court had to deal with oppositions filed (i) on August 30, 2013 against German trademark registration 30 2013 019 073, word/device: CARRERA , and (ii) on March 27, 2013 against German trademark registration 30 2012 042 608, word: Carrera. Both marks claimed amongst others protection in class 35 for online retail services.
The German Patent and Trademark Office upheld the oppositions. However, the owner of the contested marks appealed the decision and raised the plea of non-use according to Sec. 43 I, II of the German Trademark Act. The use evidence filed by the opponent was in its entirety related to a use by a licensee.
Content of the decisions
The 28th Senate comes to the conclusion that the genuine use of the opposition mark in relation to online retail services has been proven. The fact that according to the use evidence provided all of the offered goods were stemming from the opponent itself, did in the Senate’s view not prevent the existence of online retail services. In its reasoning the 28th Senate holds that it is the purpose of online retail services – which is also true for retail services as such – to sell goods to customers. The Senate goes on to argue – by pointing to the “Praktiker” decision of the European Court of Justice that retailing does not only coverthe conclusion of purchase agreements but also the selection of an assortment of goods to be offered for sale as well as several other services, which are meant to lead the consumer to purchase its goods from this retailer and not from another one. In view thereof the 28th Senate’s holds that is not required that the goods are stemming from different manufacturers. Also a retailer selling its own goods is in competition to other offers of the same goods of different manufacturers and is interested that the customers enter into a purchase agreement with him. The 28th Senate concludes that the specific activities of a retailer are not characterized by the origin of the goods.
Contrary to the 28th Senate the 29th Senate is of the opinion that dealing with one’s own goods (which is also the case in relation to a licensee) does not count as a service in a trademark-wise sense. The 29th Senate considers the core of the economic and legal activities of a retailer to lie in the collection of goods of different origins in order to put together an assortment and offering the same in a sole distribution site, either stationary or as mail order business or in electronic commerce.
Although the European Court of Justice did so far not explicitly deal with the question whether or not it considers the scope of protection of a service mark in class 35 to only cover retailing with goods of third parties or also with goods of the trademark owner itself, according to the 29th Senate it could be concluded from the reasoning of the Court in its decision relating to the Apple Store that the scope of protection does not cover the offering of the retailers own goods since this does not count as a service within the meaning of Art. 2 of the Trademark Directive 2008/95. According to the Directive only retailing in relation to external goods is covered by class 35 since the provision of a service requires the acquisition of goods of third parties. The 29th Senate goes on to argue that retailers are required to present to their customers different goods of different origins in order to render it easier for the customers to select between the different goods. In contrast, the distribution of goods by the manufacturer itself is covered by trademarks claiming protection for goods. Consequently, according to the 29thSenate, theyare not covered by the scope of protection of a service mark.
The decision of the 29th Senate of the German Federal Patent Court makes a clear distinction between trademarks claiming protection for goods and service marks. This clarification is highly appreciated, given that the European Court of Justice did neither in its “Praktiker” decision nor in its “Apple Store” decision explicitly answer the question whether trademarks claiming“retail services” in class 35 only cover retailing of third party goods or also of own goods of the trademark owner. The decision of the 29th Senate therefore clarifies that the scope of protection of a service mark does not cover the offering of the trademark owner’s own goods in lack of a “service” rendered to third parties.
Before registering a trademark it is important that the trademark owner makes up its mind as to what kind of protection the registration is sought for. In case that trademark protection for the offering of own goods is requireda trademark in relation to specific goods needs to be registered. Only in cases where the planned commercial activities are related to the collection and assortment of third party goods, trademark protection in class 35 needs to be applied for.
Author: Dr. Anja Ruge