More than ever the race is on to fence off names and words. This is particularly so in an online world where the right handle is often seen as a critical business asset.
Online retail services may be experiencing fast explosive growth. However, the system for registered protection of trade marks for retail services (whether online or not) has moved very slowly over the years and can be confusing.
Trade mark classes
An application for registration of a trade mark may be made in respect of goods and / or services. In Australia goods and services are classified using the Nice Classification, which lists 45 classes of goods and services, thousands of specific types in each class and detailed descriptions of those. Around 150 Trade Marks Offices throughout the world apply the Nice Classification.
Although the single system provides some uniformity, each Trade Marks Office has its idiosyncrasies in relation to classification. Dealing with these differences can add a frustrating level of expense in prosecuting an international trade mark portfolio as local attorneys may need to be appointed to resolve a classification objection. Experienced trade mark attorneys will endeavour to minimise the prospects of this by preparing a specification which is likely to comply with local Trade Marks Office practice.
Should I be applying for retail services?
Any trader producing goods should seriously consider registered trade mark protection. However, just because a trader sells goods, it does not mean that the trader is retailing (or even wholesaling) those goods. Therefore, it is not absolutely necessary if the trader is manufacturing but not retailing those goods.
Nevertheless, because online platforms and eCommerce make retailing much easier and cheaper than a bricks and mortar store, retail services is a logical area to fence off for future business expansion. As outlined below, examination of goods and services is such that it is prudent to protect retail services.
Retail services – a troubled trade mark history
Historically it was only possible to register a trade mark for goods and it was not possible to register a trade mark for any services. Some countries still do not provide registered protection for services per se.
Trade mark legislation eventually allowed for registration of trade marks in connection with services and in some countries registration for retail services was specifically permitted.
Why the problem with retail services?
Many countries regarded retail services as indefinite and merely ancillary to the business of trading goods in stores. Therefore, in order to obtain at least some form of protection, many traders obtained registration for the kinds of goods they were selling, for example, clothing, wine or sporting goods (all of these goods fall in different classes). However, this approach is problematic as they are not strictly using the trade mark in connection with the goods and any registration may be vulnerable to removal for non-use.
Even in countries where protection for retail services is permitted there are varying approaches as to how these services are to be claimed. Some countries allow a broad claim for simply “retail services”, whereas other countries require limitations in the form of the goods, for example “retail services in respect of clothing, footwear and headgear” or “in relation to the specific nature of the service, by for example using phrases such as ‘retail services of a department store’, ‘retail services of a supermarket’ etc”.
Some countries even require the cumbersome phrase “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods”.
Fortunately, in Australia “retail services” are clearly permissible for registered trade mark protection.
However, before you launch into an application, there are some issues to consider.
What is being provided?
Protection of anything internet related is confusing given that the Nice Classification provides little guidance. For many years, people would file for goods and services, such as software (Class 9), internet access provider services (class 38) and general computer, computer programming and computer software-related services such as creating and maintaining web sites for others or hosting web sites for others as well as search engine services (class 42) as these seem to capture the flavour of an online business.
However, the correct approach is to identify precisely what is being provided, rather than the means. For example, if you are selling a variety of goods over the internet, it is appropriate to seek protection for “retail services”.
Retail services v goods
The comparison of goods and retail services was considered in Registrar of Trade Marks v Woolworths Limited (Metro). The primary judge in the Metro case Justice Wilcox, took the view that the connection between retailing and wholesaling services and the goods sold in these outlets was not of the sufficient order of closeness.
As a result of that decision, the Trade Marks Office now considers that while there may be a relationship at some points between retailing services and goods sold in a retail outlet the relationship is not significant enough to warrant prior trade marks in most situations. Examiners should not routinely cite similar marks merely because one mark covers goods and the other mark could be viewed as covering the retail of those goods.
However there are some circumstances where goods and the retail of those goods are perceived by potential purchasers as being so close that section 44 grounds for rejection should be considered. Examiners will generally consider a specific claim for motor vehicles (Class 12), jewellery (Class 14) or clothing (Class 25) to be closely related to a specific claim for retailing or wholesaling of such goods in Class 35.
For example, a trade mark registration for AMAZON covering retail services in Class 35 may not necessarily block a third party application to register AMAZON for DVDs in Class 9, at least insofar as the Trade Marks Office is concerned and the retailer may need takes steps to challenge registration and use in connection with DVDs.
The Australian Trade Marks Office is generally unlikely to raise any conflict between goods and retailing of those goods (unless the goods are in Classes 12, 14 and 25). Therefore, comprehensive protection of goods should also include retail of those goods.
There's no place like home
The online marketplace has had a significant impact on trade mark law, given that trade mark rights are territorial rights and dealt with on a country by country basis.
Even though a website can generally be viewed anywhere, as a general principle a trade mark used on a website will not be used in Australia unless that website specifically targets Australian consumers. In Ward Group Pty Ltd v Brodie & Stone Plc  FCA 471 at 43, Merkel J held:
...use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded.
Given that the world has shrunk in an online context and given that brands are active on a handful of important social media platforms, it is preferable to consider international issues from the get go.
As outlined, Australia allows for broad protection of retail services. However, these services are protected in various different ways around the world. International analysis is warranted at the start and in particular, experienced trade mark attorneys will be across the international idiosyncrasies in protecting brands in relation to retail services.