France jurisdiction report: Shopping around for clarity
This case involves UK company Tulliallan Burlington, the owner of London’s Burlington Arcade shopping centre and three UK national and European trademarks registered for, inter alia, “grouping services for third parties of various products enabling customers to view and purchase them conveniently in a range of non-specialised retail outlets” in class 35.
German company Burlington Fashion had registered four international trademarks designating the EU for goods in classes 3, 14, 18 and 25. The opposition filed by Tulliallan Burlington was successful at first instance and was then rejected before the EUIPO Board of Appeal and the EU General Court.
The General Court dismissed the action brought by Tulliallan Burlington on several grounds. One of those grounds—based on article 8(1)(b) of the EU trademark regulation—was that the description of the invoked class 35 services should, in accordance with the Praktiker (July 2005) judgment, specify each product for which the retail sales services were provided.
In the absence of this specification, it was not possible to establish the similarity between the goods and services of the trademarks at stake.
Tulliallan Burlington subsequently appealed against this dismissal.
Questions
The questions were whether retail sales services covered shopping centre services and whether it was necessary in the opposition procedure to have the products involved in the sales services precisely listed, to assess the similarity between the goods and services at stake.
First, the CJEU recalled the definition of retail sales services under the Nice convention. These services are aimed at selling products to consumers, enabling them to view and purchase them conveniently, on behalf of third parties. Retail sales services also consist in the offer of services, distinct from the act of sale but aiming to get the consumer to buy.
The CJEU pointed out that it does not derive from the Praktiker decision that shopping centre services are by definition excluded from the scope of class 35 retail sales services.
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