AG agrees with the General Court: “retail services” and “online marketplace services” are similar in EU trade mark case

The Advocate General agreed that for consumers seeking to purchase sports goods, an online marketplace/platform and a retail website comprised similar distribution channels. Also, the intermediation or management of online markets (bringing buyers and sellers together) fell within the concept of retail services (including physical retail services). The AG agreed that the services were similar, at least to low degree, and with the General Court’s application of the CJEU’s recent decision in Tulliallan Burlington: an online marketplace or platform, such as that provided by Wallapop is, in effect, a form of ‘virtual’ shopping arcade. Wallapop Opinion Case C 763/18 P was issued on 25 June 2020.

The General Court held that an opposition rejected by the EUIPO and Board of Appeal on the basis that the relevant services were not similar should have been accepted. The opposition was against an EUTM application for for various online trading and marketplace services in Class 35 and was based on the earlier Spanish trade mark registration: , covering “retailing of sporting articles” in Class 35.

The AG’s view was that, from the perspective of a consumer seeking to purchase sporting goods, an online retail platform and a traditional retail shop could be substituted. On this basis, the risk of confusion between two slightly similar marks cannot be ruled out.

Background

Wallapop, SL is a leading platform for buying and selling second-hand products and Unipreus, SL is a Spanish retailer of footwear. Unipreus’s opposition to Wallapop’s EUTM application was rejected by the EUIPO and this was confirmed on appeal. In particular, the Fifth Board of Appeal of EUIPO found that there is no likelihood of confusion between the signs at issue because the services covered by the mark applied for and the ones covered by the earlier Spanish mark are different.

Unipreus brought an action for annulment against the Board of Appeal decision in the General Court, which was upheld. Specifically, the General Court concluded that the services at issue are, at the very least, similar to a low degree. The General Court rejected Wallapop and the EUIPO’s arguments that online trading services should be understood as the provision of a mere ‘information society service’ or ‘intermediation service’ to third parties (buyers and sellers of products) and that as Wallapop did not sell products itself, its services did not compete and were dissimilar to retail services.

Reasoning of the General Court

The AG agreed with the General Court’s key findings:

• Retail services include both physical and online sales of goods to consumers, meaning that “retailing of sporting articles” is similar to “online trading”. Consequently, the distribution channels of the services at issue are similar, to a low degree.
• The dissimilarity between the services cannot be based on the fact that the term “online trading” is actually referring to intermediation services (i.e. services relating to the management of online marketplaces, including the provision of business information). According to the General Court providing such information aims at responding (even if indirectly) to a need and facilitates retail sales. Therefore, the nature of the services is slightly similar.
• Since Wallapop’s mark does not specify if the services are offered to private and/or professional individuals, it is not excluded that the contested EUTM and the Spanish national mark are effectively targeting the same consumers.
• The services covered by Wallapop’s EUTM application are in clear competition with those covered by the earlier mark of Unipreus. This is due to the fact that purchasing goods via an online platform like that of Wallapop can be substituted with buying the same products in a physical or online store.

Comment

We will wait and see with interest as to whether or not the CJEU follows the AG’s opinion. The opinion illustrates the need to carefully analyse the nature and real world impact of services offered online when considering similarity with other services which can be provided on-line or from physical premises.