A Community Trademark application by Giacomelli Sport S.P.A. to register the GIACOMELLI SPORT (Stylized) service mark to cover, inter alia:

was refused on the ground that the specification did not identify a service for the benefit of others, but merely an ancillary sales activity for the benefit of the applicant alone.

On appeal, the Second Board of Appeal, in view of the important issue raised, invited the President of OHIM to comment. The President commented that most of the Member States were reluctant to provide protection for retail services, and that a claim for retail services would be perceived to cover all the goods carried by the particular establishment and would amount to a "cover-all" class leading to uncertainty concerning the scope of protection afforded by a registration. The President also referred to the Joint Statements contained in the Minutes of the Council Meeting, at the time the CTMR was adopted in 1993, that:

On December 17, 1999, the Second Board of Appeal held that retail services are mutually beneficial to the retailer and the consumer, and that retail services are not merely "ancillary" services to the sale of goods. In order to meet the requirement of specificity, the Board held that the applicant should amend the specification in its application to provide a comprehensible description of the services, including a reference to the field in which the service is provided, for example, "retail services in the field of sports goods".

This decision is important as it establishes that Community Trademarks should now be registrable in respect of retail services.