CJEU deals with case on sales services

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

CJEU deals with case on sales services

Sponsored by

beau-de-lomenie.png
Shopping bags of women crazy shopaholic person at shopping mall.colorful paper shopping bags.

The Court of Justice of the European Union (CJEU) dealt with the issue of 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 involved 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 international trademarks designating the EU for goods in Classes 3, 14, 18 and 25. The opposition filed by Tulliallan Burlington was rejected before the EUIPO Board of Appeal and the EU General Court.

The General Court dismissed the action brought by Tulliallan Burlington notably because 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 are provided, without which, it is not possible to establish the similarity between the goods and services of the trademarks at stake.

In appeal, the questions raised 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 Agreement. 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 the Praktiker decision does not mean that shopping centre services are by definition excluded from the scope of Class 35 retail sales services. If it is not necessary to specify the retail sales services, the goods involved by these sales services must be defined.

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 the opposition filed based on the subject trademark.

Such a dismissal would deny the owner of an earlier trademark the ability to invoke it in an opposition and would refuse to acknowledge this trademark had any distinctive character, even though it is still valid.

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.

more from across site and SHARED ros bottom lb

More from across our site

Tuesday's coverage includes BD tips for aspiring partners, and a foray into the world of SEPs
Exclusive data reveals law firms are failing to go above and beyond for their corporate clients, with in-house counsel saying advisers should consider more transparent billing processes
Arty Rajendra and Gary Moss discuss why ‘thorough and intense’ preparation, plus the odd glass of wine, led to a record FRAND victory for their client
Monday’s coverage includes news of a potentially 'game-changing' trademark development in China and how practitioners are using AI
Managing IP gives a taster of the numbers behind this year’s IP STARS trademark rankings, and looks back at our 2025 award winners
Updates from IP offices, the shifting requirements of in-house counsel, and news of London 2026 were among major talking points on Sunday
Etienne Sanz de Acedo discusses the association’s three-year plan, what he is looking forward to in San Diego, and why London came calling for 2026
Professionals from three organisations reveal what led them to sponsor Brand Action and why doing so can build camaraderie
The results of a UK government consultation on the exhaustion of IP rights and an annual review published by the EPO’s Boards of Appeal were also among the top talking points this week
The decision disregards Perlmutter’s work at the US Copyright Office and comes at a time when strong leadership and expertise are crucial
Gift this article