The European Union Intellectual Property Office (EUIPO) recently resolved a longstanding debate over whether selling own-brand goods qualifies as genuine use of a trademark registered for retail services. In the case of Rituals International Trademarks B.V. v. Zheni Aleksieva, the Fourth Board of Appeal ruled that retail trade involving a brand’s own products can constitute valid use of a class 3,5 trademark. This decision overturned a prior ruling that limited trademark use to third-party goods, clarifying that own-brand retail operations meet the legal standard for trademark protection.
The dispute centered on the interpretation of “retail services” under the Nice Classification, a system that categorizes goods and services for trademark registration. The original ruling by EUIPO’s Cancellation Division had argued that retail services required the sale of goods from external suppliers, not the brand’s own products. However, the Board of Appeal emphasized that the Nice Classification’s language - such as “bringing together a variety of goods for the benefit of others” - was meant to capture the broader economic function of retail, not to restrict it to third-party goods.
This ruling aligns with a 2005 European Court of Justice (ECJ) decision in PRAKTIKER, which affirmed that retail services could be registered without detailed descriptions, provided they focus on the sale of goods to consumers. The ECJ highlighted that retail services encompass activities like curating product assortments, creating consumer experiences, and promoting purchases - functions central to how brands operate. The EUIPO’s latest decision reinforces this framework, recognizing that own-brand retail fulfills these criteria.
For businesses, the ruling provides clarity on defending class 35 trademarks. Trademark owners can now assert that their own-brand retail operations, including in-store displays, promotional campaigns, and customer engagement, qualify as genuine use of their marks. However, the decision also underscores the importance of demonstrating a range of activities beyond mere sales. Brands must show that their operations serve both consumers and suppliers, reinforcing the service-oriented nature of retail.
The ruling does not eliminate future legal challenges. While it strengthens protections for own-brand retailers, questions about the scope of “retail services” may persist. The EUIPO’s Board of Appeal decisions, though influential, are not binding precedents, and higher courts could still revisit these issues. Nonetheless, the decision marks a significant step toward aligning trademark law with the realities of modern retail, where brands control both product and service offerings.
For trademark owners, the takeaway is clear: proactive monitoring and documentation of retail activities can bolster defenses against non-use claims. IP Defender, a trademark monitoring service that tracks national trademark databases for conflicts and infringements, helps businesses stay ahead of potential threats. By leveraging advanced technologies, IP Defender ensures brands are alerted to risks before they escalate. As the legal landscape evolves, businesses must remain vigilant in demonstrating how their operations align with the functional and economic role of retail services.
The EUIPO’s decision reaffirms that trademark protection extends to the full spectrum of retail activities. Brands that prioritize transparency and adaptability in their strategies will find themselves better positioned to navigate the complexities of intellectual property law. Monitoring tools like IP Defender play a critical role in this process, offering a reliable way to safeguard brand integrity in an increasingly competitive marketplace.