Retail Services: "Giacomelli Sport & Device"

Dr. Elisabeth Vorbuchner, LL.M., Zanker und Vorbuchner, Augsburg, Germany

The applicant had claimed the mark "Giacomelli Sport (fig.)" in relation to inter alia the following specification under Class 35: "Bringing together, for the benefit of others, of a variety of goods - excluding transport - to enable consumers to view and to buy the products".

It was OHIM's practice to view such services as equivalent to "retail services" which have not been accepted by OHIM since the beginning of the Community trade mark system four years ago. Accordingly, the application was refused, and the applicant appealed.

On December 17, 1999, in the above mentioned case (Case R 46/1998-2), the Second Board of Appeal reversed the OHIM examiner's decision and decided that, in principle, a retail sale service should be accepted as registerable under the CTM system, provided the service included a reference to the field in which the service is rendered, for example "retail services in the field of sport goods".

The Board of Appeal remanded the application back to the examiner to provide the applicant with the opportunity of amending the list of services, by providing an indication of the goods in respect of which the service of retailing shall be rendered. The decision may be found on OHIM's web site.

Comments: This is an important decision and should be widely welcomed by retailers. However, the decision is in obvious contradiction with the view of EU national trademark offices and courts. Most of them refuse to recognize "retail services" as services for which registration may be granted on the ground that "retail services" are merely ancillary to the sale of goods and do not constitute a service for the benefit of others. OHIM is in the process of defining its future approach in this matter and is now undertaking a consultation process with EU national trademark offices and with interested organizations before reviewing its practice. Whether the decision will be followed generally by OHIM and by EU national trademark offices and courts remains to be seen.