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DPMA reports on effect of new case law regarding retail services

On its website the German Patent and Trade Mark Office (DPMA) reports on recent case law by the German Federal Patent Court (Bundespatentgericht) concerning “retail services”. While the Office has not yet changed its practice, it nonetheless gives some recommendations to trade mark applicants following the changes in case law. Please find a summary of these recommendations below. Please note that the translations are not official.

Ever since the ECJ’s famous “Praktiker” decision (C-418/02) the DPMA has accepted trade mark specifications covering “retail services” as long as the retail services are further concretized as to the goods to which the retail services relate. An example is “retail services regarding gardening tools”. The DPMA has so far been of the opinion that such a concretization can be achieved by a simple reference to the relevant class numbers (Official communication by the President of the DPMA No. 34/05). In recent its decisions in "BP Shop" (case ref: 33 W (pat) 331/01) und "KAUFLAND" (case ref: 33 W (pat) 128/05), however, the Federal Patent Court decided that such a simple reference to the class number is too vague. Specifications such as “retail services in relation to goods in classes 1-34” ("Einzelhandelsdienstleistungen in Bezug auf Waren der Klassen 1-34") are therefore no longer acceptable.
The DPMA states that it has not (yet) changed its practice but advises that the applicants should further concretize their specifications as set out in the Federal Patent Court's recent case law in view of potential court cases or opposition proceedings. Depending on their field of activity, the applicant may adopt the following wording, i.e.: “Retail services in the field of data and sound carriers” (“Einzelhandelsdienstleistungen im Bereich Ton- und Datenträger”) or “retail services in relation to musical instruments” ("Einzelhandelsdienstleistungen in Bezug auf Musikinstrumente”). More examples can be found on the DPMA’s website. The Office further advises that it is also acceptable to concretize a specification through a reference to the relevant class heading(s). However, to include detailled lists of single goods is not advisable ("sachdienlich") according to the DPMA.

Source: DPMA Communication of 19 February 2008: Neue Rechtsprechung des Bundespatentgerichts zu den Einzelhandelsdienstleistungen

Posted by: Birgit Clark @ 19.34
Tags: Bundespatentgericht, ECJ, German Trade Mark and Patent Office, German trade marks, practice amendment,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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