Does Rituals provide services?

Until about 15 years ago, trademark holders were unable to protect their trademarks for wholesale or retail services.

These services were not accepted by trademark authorities, as they were not included in the Nice treaty governing the proper classification of goods and services.

The reasoning was that selling a product was seen as a natural extension of producing that product. After all, it makes sense that a wine producer sells their own wine — such sales were not regarded as a separate service provided to consumers or third parties.

So far, logical. But what if a wine shop wants to protect its name? Such a shop sells wines from various producers. The service offered to consumers consists of advising and supplying the products. And what if that same wine producer opens its own stores under its trademark name?

In the meantime, a decision by the European Court of Justice led to an amendment of the classification treaty, and today it is possible to protect trademarks for wholesale and retail services.

In cases concerning the use of trademarks for such services, it became clear that use by a wine shop for retail services was readily accepted. The situation, however, was different for a store that shares its name with the products it sells and only offers those products. In a case regarding the use of the RITUALS trademark, the European Union Intellectual Property Office (EUIPO) found that there was no genuine use of the RITUALS mark for retail services, since Rituals only sells its own products in its stores. According to the EUIPO, only Rituals benefits from offering this service—not the consumer.

A remarkable decision, which doesn’t quite align with today’s reality where brands strive to create a total experience: it’s no longer just about the product, but about the entire brand perception. And the physical store is, of course, the perfect place to build and strengthen that experience.

Fortunately, Rituals appealed and this led to a different outcome. The Board of Appeal reviewed the relevant case law and noted that in recent years, the EUIPO has been interpreting the concept of ‘retail services’ more and more narrowly. And without good reason, as the Court of Justice’s landmark decision still applies and actually provided a broad definition. The Board of Appeal also saw no reason why, for example, Intersport should benefit from protection for retail services, but Adidas should not. In this case, the Board found sufficient use of the RITUALS brand for retail services and rejected the request for cancellation. A decision we can fully support.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.