Telco and database services, comparison sites, and shopping centres – courts increasingly taking a modern view on trade mark specifications, but will the registries follow their lead?

Brand protection is not always as straightforward as it should be.

For one thing, even once you have chosen your brand, you need to draft a specification that covers what you do and/or propose to do.

This is a simple exercise if you are a t-shirt company, but can be a tricky business for service providers in evolving (and even some quite traditional) fields.

Layer over that the fact that many countries have different formal requirements (the US is famously strict on specifications, Europe is beginning to find its feet and reign in overly broad specifications, while Australia and New Zealand are generally more liberal) and things can get messy. Fast.

What is more, the specification drafting exercise is fundamental to the value of your brand portfolio, as it will determine enforcement rights in the infringement context and the ability to protect a registered mark against a non-use attack.

It’s nice to see then some recent decisions upholding specifications that accord with commercial reality in a rapidly evolving market. Trade mark protection that “does what it says on the tin”, if you will. This is a breath of fresh air in the face of what can sometimes be seen as quite outdated objections from the registry regarding new business models. This modern approach should act to increase commercial certainty for those clearing the way for a new brand and in enforcing it.

A couple of those recent decisions (and a couple of not so recent decisions) are discussed below, starting with the decision of the European Court of Justice in Netto.

The bringing together of services (Case C-420/13 Netto (10 July 2014))

Not so long ago, it was not possible to register trade marks in relation to services at all.

Then, once it became possible to register trade marks for services, battle was drawn as to how to protect services such as those in the retail trade. In Europe, the Praktiker decision in 2005 (Case C-418/02) established that retail services could only be protected in respect of the goods to which the services relate. [For the record, the registry practice in Australia and New Zealand is to allow retail claims without needing to specify the goods retailed.]

But what about service providers that bring together, sell or compare services? This is clearly a boom field, with comparison sites constantly vying for consumer attention.

Europe’s highest court has decided that Netto (a Danish equivalent of Aldi and Lidl) can obtain trade mark protection in respect of bringing together the services of others. This is provided that the specification is formulated with sufficient clarity and precision. This was in the context of a trade mark application filed with the following specification:

Class 35 Services in the retail and wholesale trade, particularly the bringing together, for the benefit of others, of a variety of services enabling customers conveniently to purchase those services, particularly services provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example websites or television shopping programmes, in relation to the following services: in Class 35: Advertising; business management; business administration; office functions; in Class 36: Issue of vouchers or tokens of value; in Class 39: Travel arrangement; in Class 41: Entertainment; in Class 45: Personal and social services intended to meet the needs of individuals.

Of course, there are other ways to approach the drafting specifications for these types of services, but the in principle “green light” for these types of claims is a good thing.

Databases and telecommunications (Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch) (16 June 2014))

Total, the owner of the trade mark YOURVIEW, sued the operators of the TV service YouView for trade mark infringement. A detailed case note from our London team can be seen here.

For present purposes, it is notable that YouView – in its defence – claimed that the YOURVIEW registration was invalid. One basis for this was that aspects of the specification for YOURVIEW covering ‘databases’ and ‘telecommunications services’ were insufficiently clear and precise (based on the recent ruling from the CJEU in IP Translator, discussed in more detail by Robert Guthrie here). Leaving aside the legal issue of whether a registration can be invalidated on this basis at all, Sales J came to the view that the terms were sufficiently clear and precise, albeit factoring in that there will inevitably be some room for vagueness or uncertainty “since one is using concepts expressed in short words or formulations to apply to fields of often complex and variable activities…”

This will be music to the ears of database operators and telcos.

Shopping centres (Land Securities Plc & Ors v The Registrar of Trade Marks [2008] EWHC 1744 (Pat) (25 July 2008))

It’s worth mentioning that a similar issue was considered before a UK court in a more traditional field in 2008.

We have all walked through shopping centres and taken in the convenient mix of retail stores together with food outlets and other amenities. But how do you protect these services when you are not actually in the business of providing retailing services yourself?

The issue played out in a UK court in 2008. A number of shopping centre proprietors took issue with a decision rejecting protection of their trade marks in respect of shopping mall services (in trade mark speak: “the bringing together for the benefit of others, of a variety of retail outlets, entertainment, restaurant … services, enabling customers to conveniently view and purchase goods and services and make use of such facilities in a shopping centre or mall”). The battle was worthwhile. Mr Justice Floyd accepted that the specification was sufficiently clear to capture the services provided by a shopping centre operator (albeit subject to some small provisos), and remitted the case back to the registry.

What to avoid when drafting a spec?

While the above cases provide helpful precedents, there always has to be a cautionary note!

There are cases in which the specification is so unclear that it must be read down. For example, in Case T-162/08 Frag Comercio International, S.L. v OHIM (11 November 2009), the General Court of Europe had to consider an opposition based on an earlier mark covering “retail services in shops”. The General Court upheld a finding that the services covered by the earlier mark were too vague to enable a proper comparison to be made with the applied-for goods (in that case, “business advisory and management services; business organisation consultancy; business research; franchising; import-export of goods”). While there were legal issues in this case that are specific to Europe (due to the Praktiker and IP Translator decisions mentioned above that are not discussed here in detail), it always worth ensuring that clarity and precision is at the forefront when drafting your spec.

The “take homes”

The take homes are that the careful drafting of specifications is absolutely fundamental in terms of protecting your brand, and therefore should be given due importance.

Given the decisions above, businesses in the comparison market and retail spaces might want to take a fresh look at their current protection to see if it can be bolstered further with these developments in mind.