Trade Marks for retail services

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For many years trade mark offices and trade organisations struggled with the concept of registration of trade marks for retail services, which until comparatively recently were not considered to constitute a service for which a trade mark could be registered: retail was considered a “service” which was merely ancillary to the goods themselves.  Subsequently, trade mark applications for retail services were deemed acceptable, provided that they employed a circumlocutory form of words, and current practice is that one may claim protection for “retail services” as long as the range of goods to be retailed is particularised in the application.

In a recent case in which Williams Powell represented a Community trade mark applicant whose services included retail of jewellery, the application was opposed by the owner of a similar trade mark which a national trade mark office has registered for “retail services” generally, without mention of the goods sold by the opponent. 

The usual outcome in a situation of this kind would be that the specific goods or services falling within the scope of the more general description of goods or services would be considered identical, thereby increasing the overall likelihood that the application would be refused.  In this particular case, the Community Trade Mark Office noted that the national registration did not comply with current practice, deciding that the “retail services” for which it was registered were too vague and indefinite to allow the registration to be enforced, and so rejected what had appeared to be a strong opposition.

The moral of this is and the earlier summary is that a trade mark portfolio should be reviewed periodically to ensure that registered marks are maintained in line with current practice, and that standard filing instructions agreed between client and attorney are regularly reviewed and updated to take into account changes in the law.