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In March this year, the Court of Justice of the European Union opened the acceptance of sales services in opposition procedures in the joined cases of C-155/18 and C-158/18 P, Tulliallan Burlington v European Union Intellectual Property Office (EUIPO) and Burlington Fashion.
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.
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.
“The CJEU specified that it is possible to determine the list of the goods involved in the retail services through requesting evidence of genuine use.”
The court recalled that the Praktiker case law applies only to trademarks already registered at the date of the decision, before noting that if it is not necessary to specify the retail sales services for which the registration is sought, the goods involved by these sales services must be defined.
However, and contrary to the General Court, the CJEU added that if the obligation to precisely define the goods which are the subject of the retail sale services is not respected, the consequence cannot be the immediate dismissal of an opposition based on a trademark registered after the Praktiker judgment.
Such a dismissal would deny the owner of an earlier trademark the ability to invoke it in an opposition to prevent the registration of an identical or similar trademark for similar goods or services and would refuse to acknowledge this trademark had any distinctive character, even though it is still registered and has not been declared invalid on one of the grounds provided for in regulation 207/2009.
In addition, the CJEU specified that it is possible to determine the list of the goods involved in the retail services through requesting evidence of genuine use.
The CJEU decided that the concept of retail sales services includes services consisting, for shops, of grouping goods in a shopping mall to allow consumers to see and buy them conveniently, and of offering services distinct from the act of sale but aimed at getting consumers to buy goods. Thus this concept covered shopping centre services.
In addition, according to the CJEU, the General Court had adopted a definition of “retail sale services” which was too restrictive, because the trademarks invoked were not specifying the goods involved by these retail sale services, without taking into account that Tulliallan Burlington was providing these services.
And so, the General Court decision was annulled.
Aurélia Marie is head of the trademarks, designs, domain names and copyright department at Cabinet Beau de Loménie. She can be contacted at: firstname.lastname@example.org
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CJEU, Burlington Arcade, EUIPO, international trademarks, General Court, retail services, third parties, Praktiker, registration, distinctive character