Scope of protection of a retail service mark
Does the scope of protection also extend to retailers with regard to goods produced in-house?
In its current issue, the journal GRUR-Prax, which specializes in intellectual property law, published an article by our colleague and IP lawyer Kathrin Mandel on trademark law, in which she deals with the question of whether the scope of protection of a retail service mark also includes those services which the retailer provides with regard to goods manufactured in-house.
In this context, the 29th Senate of the Federal Patent Court issued a decision which deviates from the opinion of the 28th Senate. According to this decision, activities which are limited to the trade with own goods or with goods of the own licensor do not constitute services in the sense of class 35, since they are covered by the rights from the registration of trademarks. However, this change of direction could restrict the freedom of certain manufacturers of goods too much, because then they could only defend themselves against third parties by way of protection of reputation, which in practice is only possible with a very high effort.
Furthermore, the service component could be seen in the fact that the retailer who sells his own goods, firstly, saves consumers one or more trips to different stores to satisfy their needs, and secondly, because he gives his customers a very special shopping experience and offers more personalized and competent advice.
The further development of this case law remains exciting!
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