As reported in our June 2000 Newsletter (N.S. 192), in the GIACOMELLI SPORT case, the Second Board of Appeal held that Community Trademarks should be accepted for registration in respect of retail services, provided such services are defined with some specificity (i.e. provided that the field of activity or the specific goods to which the retail services relate are indicated).

In light of this case, the President of OHIM issued a statement of policy on March 12, 2001 concerning the registrability of Community Trademarks in respect of retail services.

It is now OHIM's policy that, although retailing as such is not a registrable service, the services rendered in connection with the retailing of goods will be accepted for registration as Community Trademarks and will be classified in Class 35.

OHIM noted that there is currently no consensus among those Member States that provide for registration of retail services how such services should be described. While some Member States accept "retail services", without further qualification, others require that the goods in respect of which the services are rendered be indicated. Other Member States require wording along the following lines: "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods", which is set forth in the explanatory note to Class 35 in the 7th edition of the Nice Classification; however, OHIM does not favor such wording. OHIM is also unwilling to accept the view stated in the GIACOMMELLI SPORT case that a reference to the field of activity is necessary, as it considers that the meaning of the term "retail services" is clear.

While limiting the specification to the field of activity or more specific nature of the retail service provided is not a legal necessity, OHIM does favor such limitation. OHIM has suggested that the limitations be expressed by utilizing wording such as "in relation to the field of activity, by for example using phrases, such as 'retail services in respect of food and beverages'" or "in relation to the specific nature of the service, by for example using phrases, such as 'retail services of a department store', 'retail services of a supermarket', etc.".

Pending Community Trademark applications for retail services will now be accepted, even if notice of a provisional refusal has already been issued. However, if a decision concerning an application for retail services has been rendered and no appeal was filed within the appeal term, the decision is final and cannot be reversed; in that event a new application would be necessary.