Class 35 trademark registration: should you file for retail services or advertising?
Selecting the appropriate classes and drafting precise specifications are the cornerstones of successful trademark registration. Certain formulations in the Nice Classification are a great concern to many businesses. A particularly common inquiry concerns the necessity of protecting Class 35 for the retail sale of products. This comprehensive guide clarifies these issues and provides authoritative legal references.
No need to file in class 35 to sell your products!
The scope of trademark rights
Registering a trademark grants its owner exclusive rights to exploit the sign in commercial activities. This inherently includes the right to sell the protected products bearing the trademark.
Articles 2 and 10 of EU Directive 2015/2436 (Trademark Directive) establish that trademark registration confers exclusive rights to use the trademark in the course of trade, including for the sale of designated goods and services.
What trademark rights include
The exploitation rights encompass notably:
- Reproduction and affixing of the trademark
- Use and potential removal of the trademark for designated products or services
- Sale, offering for sale, and importation of products bearing the trademark
Example: A luxury company selling handbags (Class 18) and clothing (Class 25) inherently has the right to sell these products through trademark registration alone—no Class 35 registration is required.
Case law: Arsenal judgment
The Court of Justice of the European Communities (CJEU) clarified in its landmark Arsenal judgment of November 12, 2002, that the act of sale constitutes use in the course of trade, stating that such use occurs in the context of sales to consumers and is not intended for purely descriptive purposes (Case C-206/01).
Nice classification framework
The Nice Classification explicitly states that “for classification purposes, the sale of goods is not considered a service.” Rather, Class 35 refers to different forms of retail activity, such as retail services or wholesale services.
No need to add Class 35 protection to secure the right to sell your products. The right to sell is inherent in trademark exploitation for the designated goods.
When should you file a trademark in class 35?
Understanding class 35 services
Class 35 covers several distinct service categories under its general heading: “Advertising; business management, organization and administration; office functions.”
Retail services: legal definition
The Court of Justice of the European Union (CJEU) provides a precise definition of retail services in its Praktiker judgment: retail services include, beyond the legal act of sale itself, all activities undertaken by the retailer to encourage the conclusion of the sale, such as selecting an assortment of products and offering services designed to persuade the consumer to purchase from that merchant rather than from a competitor. See CJEU Case C-418/02, Praktiker Bau- und Heimwerkermärkte AG (July 7, 2005).
Who should register retail services?
Retail services in Class 35 are typically registered by merchants who sell third-party products, not by merchants selling their own manufactured products.
Practical Examples:
- No Class 35 Required:
- A vineyard selling its own wine bottles → Protect the product “wine” in Class 33
- A fashion brand selling its own clothing → Protect “clothing” in Class 25
- Class 35 Required:
- A retail store selling third-party wine brands → Register “retail services concerning wine” in Class 35
- An e-commerce platform selling various manufacturers’ electronics → Register “online retail services concerning electronic goods” in Class 35
INPI requirements for specification
The French National Institute of Industrial Property (INPI) requires applicants to clearly indicate in the trademark specification which products are the subject of the retail services.
Best Practice: The specification must state: “Retail services concerning [specific category of goods]”
Example Specifications:
- ✓ “Retail store services featuring computer software and hardware”
- ✓ “Online retail services concerning cosmetics and beauty products”
- ✗ “Retail services” (too vague, will be rejected)
Class 35 for advertising services?
Recent case law developments
Two recent decisions by the General Court of the European Union (formerly Tribunal of the European Union) have clarified the scope of advertising services in Class 35, examining the AIRBNB and RTL trademarks.
EUIPO definition of advertising services
The Court approved the definition proposed by the European Union Intellectual Property Office (EUIPO): advertising services consist of “offering assistance to other businesses in selling their products and services by promoting their launch and/or sale, or ensuring the strengthening of client companies’ market position and enabling them to acquire a competitive advantage through advertising”.
The Airbnb decision: advertising for third parties only
Evidence provided by Airbnb demonstrated advertising for its own services rather than an offer of advertising services to third parties.
The trademark AIRBNB was revoked for advertising services because Airbnb only advertised its own platform, not advertising services offered to third-party businesses. See General Court Decision T-1032/23, May 21, 2025, Airbnb, Inc. v EUIPO – Airtasker Pty Ltd (AIRBNB), EU:T:2025:527.
The RTL decision: advertising as a distinct economic activity
The Court held that services provided to third parties must involve economic consideration. RTL Group’s integrated advertising agency fulfilled the definition of advertising services under the RTL trademark. Furthermore, this agency provided its services for a specific cost, separate from the cost of broadcasting advertisements.
The agency provided services for remuneration, and their cost was distinct from the costs of broadcasting advertisements in the group’s media channels.
The RTL trademark was maintained for advertising services. See General Court Decision T-1088/23, May 7, 2025, RTL Group Markenverwaltungs GmbH v EUIPO – Marcella Örtl (RTL), EU:T:2025:446.
Implications for your trademark strategy
These decisions increasingly clarify the concept of service provisions, enabling trademark applicants to refine their portfolio protection strategies.
Class 35 advertising services apply only when you provide advertising services to third-party businesses for remuneration, not when you advertise your own products or services.
Additional legal context and considerations
The Apple store case: retail services and store layout
In its landmark decision C-421/13 (July 10, 2014), the CJEU ruled that the representation of a retail store layout may be registered as a trademark for services that relate to goods, but do not form an integral part of the offer for sale, provided the sign is capable of distinguishing the applicant’s services from those of other undertakings. See CJEU Case C-421/13, Apple Inc. v Deutsches Patent- und Markenamt (July 10, 2014).
Implications:
- Store layout designs can be protected as trademarks
- Such protection extends to ancillary services (demonstrations, training, workshops) that are separate from the mere sale of goods
- The layout must depart significantly from industry norms to be distinctive
Portfolio management strategy:
- Audit existing Class 35 registrations for genuine use
- Document third-party services if claiming retail or advertising services
- Update specifications to reflect actual business activities
- Consider defensive registrations only when strategically justified
- Monitor case law developments as courts continue refining these concepts
For retailers and E-commerce platforms:
✓ Register Class 35 retail services with precise specifications
- Format: “Retail store services featuring [specific goods category]”
- Include all distribution channels: physical stores, online, mail order, etc.
✓ Specify the products being retailed clearly in your application
For advertising agencies and marketing firms:
✓ Register Class 35 advertising services if you provide services to third-party clients
✓ Demonstrate economic separation between your advertising services and any media you may own
✗ Do not register advertising services if you only promote your own products/services
These judicial decisions progressively clarify the conception of service provisions, allowing trademark applicants to refine their brand portfolio protection strategies.
Understanding when Class 35 protection is necessary—and when it is not—is essential for effective trademark strategy. The fundamental principle remains: selling your own products does not require Class 35 registration, as this right flows inherently from product-based trademark registrations. Class 35 should be used exclusively for genuine retail services (selling third-party goods) and advertising services provided to other businesses for remuneration.
For personalized guidance on trademark classification and strategy, a consultation with an intellectual property attorney is strongly recommended.
Stéphane Bellec, Attorney, Partner Cabinet De Baecque Bellec
Intellectual property attorney
Tél. + 33 (0) 1 53 29 90 00