News Trademarks, Domain Names, Copyright 2000

Retail Services in the EU - An ancient craft has become a service.

By now you may have repeatedly heard of a "Giacomelli case" before the Community Trademark Office, from different sources.

In view of the rumours so created, contrary to their initial attitude Messrs Giacomelli have now asked us to issue our own comment about that case.

We took over a CTM application filed by the Italian company Giacomelli Sport S.p.A. seeking registration also for "retail services", clearly against the OHIMs guidelines on the matter.

As a general rule, wherever retail services were not registrable we have adopted the by-description "services of selection and advice in respect of specialised products, including (list of the products); services to the public consisting of the selection and organisation of the offer and sale of (list of the products) manufactured by others; services rendered making available to customers the choice and purchase of selected products" in international class 42, and we believe that you may follow a similar path.

But recently and progressively retail services have become registrable as such, in international class 35, in many countries including countries which are members of the CTM.

So, basically we have come to a situation where domestic applications for retail services in those countries were granted whereas the same kind of application for the same countries through the CTM procedure was bound to rejection.

Giacomelli Sport have interests in the European Union countries and were willing to go through the CTM registration process in order to obtain protection for their main business activity: "selling sport articles", and they shared our opinion that it was worth arguing against the expected refusal.

So it was, and our appeal for the company Giacomelli was the leading case on the subject issue, so that quite correctly it was known as "the Giacomelli case" and it is now known as "the Giacomelli decision".

We believe that in our world the reasons why retail services (especially for products manufactured by others) should be registrable are quite obvious. However, as you know, we do not have good reasons unless we have good technical reasons; therefore, if you wish to go through the technicalities of the appeal you may read the following documents: our statement of grounds , (actually part of it; we have left out the relevant economic analysis and an overview of the international scenario on "retail services") and the (actually part of it; we have left out the relevant economic analysis and an overview of the international scenario on "retail services") and the final decision of the Board of Appeal..

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