The European Union Intellectual Property Office (EUIPO) recently clarified that selling own-brand goods through retail outlets qualifies as genuine use of a trademark registered for retail services in class 35. This decision, issued by the Fourth Board of Appeal in the Rituals International Trademarks B.V. v Zheni Aleksieva case, resolves a long-standing debate over whether such activity meets the legal definition of “retail services.”
Understanding Retail Services in Trademark Law
Trademark law often hinges on precise definitions. The term “retail services” in class 35 has been a point of contention. Historically, some argued that selling a brand’s own products didn’t constitute a “service,” as it lacked the perceived value of third-party goods. Others contended that the category was too broad, risking overprotection.
The Nice Classification, a global standard for categorizing goods and services, defines retail services as “the bringing together, for the benefit of others, of a variety of goods… enabling customers to conveniently view and purchase those goods.” This phrasing has led to legal disputes, as interpretations vary.
The Legal Context and PRAKTIKER Case
The European Court of Justice (ECJ)’s 2005 PRAKTIKER decision laid the groundwork for this ruling. The court emphasized that retail services are fundamentally about selling goods to consumers, including activities like selecting product assortments, arranging displays, and creating in-store experiences. These elements, the court ruled, are integral to the retail function and qualify as services under trademark law.
The ECJ also clarified that while the Nice Classification’s wording is useful, it should not be treated as a rigid legal standard. Instead, the focus should remain on the economic reality of retail operations.
Implications for Businesses
The Rituals decision reinforces that own-brand retailers can defend their class 35 trademarks by demonstrating active engagement in retail activities. Simply selling products is insufficient, businesses must show a broader range of actions that serve consumers, such as:
- Curating product selections
- Designing customer experiences
- Offering promotional services
- Providing information or support
This approach aligns with the ECJ’s emphasis on the retail service’s role in facilitating consumer purchases. It also underscores the importance of trademark monitoring, as brands must actively maintain their use to avoid revocation.
Looking Ahead
While the Rituals ruling provides clarity, challenges remain. The EUIPO’s Board of Appeal decisions are not binding precedents, and future appeals could reshape interpretations. Businesses should remain vigilant, documenting all retail activities that support their trademark claims.
For trademark owners, the lesson is clear: a robust strategy for monitoring use and demonstrating active retail engagement is critical. As the legal landscape evolves, adaptability and thorough record-keeping will be key to protecting intellectual property in the retail sector.