Rituals and trademark class 35: Are retail brands no longer at risk in the EU?

How distinct are the retail services of shops that offer only one brand's products (such as flagship stores) from those that sell products from multiple brands (such as department stores)? This was the question at the heart of the recent Rituals trademark class decision at the CJEU, as Sven Valstar explains. 

Following the rulings of the Court of Justice of the European Union (CJEU) in Apple (C-421/13) and Burlington Arcade (C-155/18), the retail services offered by brand-specific or mono-brand stores and those offered by multi-brand stores were considered completely distinct from a trademark perspective. How can this be the case? 

A limited interpretation of trademark class 35 

According to the Nice Classification, an internationally recognised system used to classify goods and services in trademark registrations, retail services in class 35 include “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods”. 

Prior to the Rituals decision discussed in this article, the EU Intellectual Property Office (EUIPO) interpreted ‘others’ as third-party producers seeking an outlet for their products: “The ‘others’ benefiting from the ‘bringing together of a variety of goods’ are the various manufacturers looking for an outlet for their goods” (Guidelines 2.8.6). Furthermore, the EUIPO's position was that selling one's own goods through a brand-specific store or website does not constitute genuine use of “retail services” in class 35, explaining:  

“[..] In the same way that advertising one’s own goods does not constitute use for advertising services in class 35, there is no use for retail services in class 35 where the manufacturer is merely selling its own goods from its shop or website. The sale by the manufacturer of its own goods is not an independent service but an activity covered by the protection conferred by registration for the goods [..]”  

The consequence of this interpretation was that owners of shops offering single-brand products could not (in principle) rely on continued use and thus on protection for retail services in trademark class 35 once their registration was older than five years. Instead, retail services were considered an extension of their core activity (the sale of goods), unless the businesses involved could demonstrate that their services benefited third parties.  

Would offering additional services (such as staffing stores, advertising, providing advice, after-sales service, etc) while selling own-brand goods help? Unfortunately, the EUIPO explicitly states that such ancillary services only qualify as "retail services" if they do not form an integral part of the sales offer. Advertising own-brand products in a customary manner would likely not qualify as an independent "retail service”, therefore. 

How Rituals challenged this limitation 

Rituals, the international retailer of personal care and home furnishings, was recently faced with an action to revoke its word mark RITUALS, which is registered for goods and services in classes 3, 4, 21, 24, 30, and 35. EUIPO’s Cancellation Division granted the request in part, leaving the registration of the mark valid only for goods in class 3. Rituals filed an appeal, requesting that the contested decision be partially annulled. 

In its decision (R 2472/2023-4) on that appeal, the Board of Appeal (BoA), citing the Praktiker judgment (C-418/02), acknowledged that Rituals operates under a retail model consisting of a carefully curated product range, in-store demonstrations, customer experiences (such as hand massages and tea rituals), and a selective distribution system with strict brand rules and support from authorised retail partners. These activities are aimed at facilitating purchasing decisions and enhancing the customer experience and, therefore, fall within the definition of retail services. As a result, the BoA found that Rituals had sufficiently demonstrated genuine use of the contested mark for retail services in trademark class 35.  

What happens next? 

Whether this BoA decision actually represents a change of course from the EUIPO's established position on retail services provided by mono-brand stores remains to be seen. What this ruling does demonstrate, however, is that offering a complete "experience" – with the aim of stimulating a sales transaction – can be considered genuine use of retail services, even when the provider only sells its own brand of products.  

Much will depend on the available evidence and reasoning, but this BoA ruling at least gives mono-brand retailers some confidence that they can still invoke – and defend – their registrations for retail services in class 35.  

Key takeaways for brand owners 

Preparing evidence and arguments are crucial not only when rights need to be upheld, but also when defending against, for example, a cancellation action against your trademark registrations. By consulting with your trademark attorneys to gather and prepare evidence, you can avoid having to rush to gather material when confronted with such an infringement or a cancellation action.  

To find out more about this important topic, speak to your Novagraaf attorney or contact us below.  

This article was written by Sven Valstar, an Associate IP Consultant at Novagraaf in Amsterdam.