Giacomelli Sport (“GS”) of Bologna applied to register as a Community Trade Mark a logo including the words Giacomelli Sport.
Who: Giacomelli Sports SPA, CTM Board of Appeal
When: December 1999
Giacomelli Sport ("GS") of Bologna applied to register as a Community Trade Mark a logo including the words Giacomelli Sport. The registration was sought in service class 35 in respect of "Bringing together, for the benefit of others, of a variety of goods…to enable consumers to view and buy the products". In other words, GS were trying to buck a well established trend amongst trademark registries globally against registering trademarks for "retail services". Such services are not sold or traded in as such, it is said, they are merely ancillary to the selling of other products. Retailers wishing to register their brands as trade marks, therefore, have had to go the highly expensive and labour-intensive route of registering in respect of every category of products which they sell. The CTM Appeal Board found in GS's favour. It decided that retailers did indeed provide a service insofar as they satisfied a particular need.
Consumers quite clearly preferred the services provided by one shop over those offered by another. There was material goodwill and perceived value in providing a retail service that people liked and returned to.
Accordingly, the Board concluded that it must have been policy rather than legal consideration, that drove the historical refusal to register brands in respect of "retail services" appeared to be policy reasons rather than legal ones, and allowed the appeal.
The registration route adopted by GS, therefore, which was to apply to register in the "advertising and business management and administration" class 35 and describe the products offered for sale, was vindicated.
Why this matters:
The CTM system is designed to provide a one-stop registration service for brand owners wanting EU wide protection. The idea is that there should be no material differences between the rules for registrability and enforcement applied by the CTM office in Alicante and those applied in each EU state.
Clearly there will now be a rush by retailers for CTM registrations, but it must surely only be a matter of time before the UK courts, and those of other EU states, follow the Alicante lead and end the "retail services" anomoly. Who will be the first UK retailer to test this out?