Italy jurisdiction report: Trademarks for retail services

While in some jurisdictions having a trademark in class 35 for retail services is seen as a safety net in a range of situations, eg, cross-class oppositions, in other countries it is still not possible for even retail companies to obtain such a mark.

IP law, and trademark law specifically, are commonly praised for their high level of harmonisation worldwide as compared to other branches of law, but retail services still have an element of uncertainty, even within the strong boundaries of the EU.

Italy has just gone through its own retail services-related drama.

It all started in 2016 when the Italian Patent and Trademark Office (UIBM) started to issue several provisional refusals for trademark applications claiming class 35. These provisional refusals were based on the principle that the mere resale of goods that are already owned by the seller, even though these are manufactured by a third party, is not a service per se, so such marks are not entitled to be identified by a registered trademark. Basically, retail services are carried out exclusively by business agents (eg, intermediaries between the manufacturer and the consumer) or by other agents.

Such an argument is perhaps confirmed by the fact that the Nice classification does not include the generic description “retail services” by itself.

Resilience

This argument by the UIBM was a bombshell for the Italian IP industry. However, when faced with a potential vacuum of protection for hundreds of enterprises in the retail services industry, the Italian IP community gave a good demonstration of its resilience, with the Italian Industrial Property Consultants Institute at the helm.

It should be noted that the Court of Justice of the European Union (CJEU) had already ruled, in 2005, that a service trademark may be registered for services provided in connection with the retail trade (C-418/02, Praktiker).