Beyond Bricks and Mortar

The Advocate General of the Court of the Justice of the EU (CJEU) has just issued an opinion that could have welcome implications for a number of businesses in these uncertain times.

The case centred around Wallapop, a Spanish company which operates an online marketplace for second-hand goods (similar to Craigslist) and Unipreus, a sportswear retailer (similar to Sports Direct). Wallapop operates solely online whilst Unipreus operates through both physical stores and a website.

In a trade mark dispute between the two, Wallapop argued that merely providing an online market place did not mean it was itself retailing to consumers in the traditional sense.

Background

On 18 September 2014, Wallapop applied to register its name as an EU trade mark under class 35 for “’online trading services relating to the operation of an online marketplace and related services”. Unipreus opposed the application on the basis of its earlier Spanish registration for “WALA W” which also covered class 35 but for “retailing of sporting articles”.

The European Intellectual Property Office (EUIPO) initially rejected the opposition on the basis that the service of operating an online marketplace was different to classic retail services. The thrust of the argument was that retailers sell directly to consumers whereas an online marketplace merely facilitates transactions between businesses and consumers.

Unipreus appealed this decision all the way up to the EUIPO’s fifth board of appeal which upheld the EUIPO’s decision. Having exhausted all other avenues, Unipreus appealed to the EU Court of Justice.

The Appeal

In a reversal of fortunes, the EU’s General Court ruled against the EUIPO’s decision and stated that the two services were at the very least similar. In response, Wallapop lodged its own appeal to the CJEU and asked it to specifically consider the extent of similarity between the services.

The Advocate General, Gerard Hogan, has just issued his formal opinion that they two should indeed be considered similar. In giving his opinion, he cited an earlier case likening an online market place to a traditional shopping arcade and that the platform offered by Wallapop was “in effect, a form of ‘virtual’ shopping arcade which can be accessed via the internet”.

Moreover, he argued that “the traditional distinction between outlets selling to customers in physical premises, on the one hand, and those entities engaging in direct online sales, on the other, has in recent years been undermined — almost to the point of collapse — by both technological developments and changing patterns of consumer behaviour” and it would be non-sensical to see the two as separate distribution channels for the purpose of trade mark law.

Briffa comment

Whilst it must be stressed that an opinion of the Advocate General is not binding, the CJEU does typically tend to follow them. This case is clearly a welcome development for retailers in these uncertain times as it suggests that a trade mark covering retail services will extend to both physical and online channels, including where such online sales are conducted in the context of a ‘general marketplace’ rather than direct to consumer sales.

Here at Briffa, the team benefits from over 25 years’ experience filing in nearly every jurisdiction in the world and we are able to assist in all aspects of the trade mark process from initial filing to registration. If you need any further information in this regard please do feel free to get in touch with us via info@briffa.com.

Written by Tom Synott, Associate