One of the most common mistakes when filing a trademark application is automatically including Class 35 of the Nice Classification simply because the applicant sells its own goods.

In reality, the mere act of selling goods does not mean that the activity falls within Class 35. This misunderstanding often results in errors when drafting specifications for goods and services. Moreover, unjustifiably claiming Class 35 may give rise to unnecessary trademark infringement allegations.

What Does Class 35 Actually Cover?

Class 35 of the Nice Classification covers services aimed at assisting the commercial or business activities of other persons. The Explanatory Note to Class 35 expressly states that the sale of goods is not considered a service for classification purposes.

Typical services covered by Class 35 include:

  • advertising and marketing services;
  • the presentation of goods on behalf of others through retail stores, websites or catalogues;
  • organization of trade fairs and exhibitions;
  • search engine optimization;
  • business assistance services (such as personnel recruitment, business negotiations on behalf of others and cost analysis);
  • administrative services (including bookkeeping, auditing and tax return preparation); and
  • office support services.

The common feature of all these services is that they are provided for the benefit of another person in order to facilitate that person’s commercial activity, rather than constituting the provider’s own trading activity.

Why the Sale of Goods Is Not a Class 35 Service

The Nice Classification is based on a clear distinction between goods and services. Goods are tangible products that are manufactured and sold. Services are activities performed for the benefit of another person upon request. These two categories are mutually exclusive.

From a legal perspective, the sale of goods is a transaction under a contract of sale, where the trademark identifies the goods and their commercial origin. By contrast, Class 35 services involve activities performed for the benefit of a third party. The service provider advertises, promotes or organizes the sale of another undertaking’s goods. The existence of a separate legal relationship between the service provider and its client is therefore a defining characteristic of Class 35.

Accordingly, displaying goods on a website or in an online store does not transform the sale of goods into a Class 35 service. It is merely a method of offering those goods to end consumers.

The situation differs where a trademark is used not to identify specific goods but to designate services relating to the promotion or organization of the sale of goods from different manufacturers. For example, where a sign is used as the name of a retail platform or store through which third-party goods are offered for sale, such use may fall within Class 35. In that case, the trademark identifies the retail service itself rather than any particular product.

Practical Distinction: Examples and Case Law

Ukrainian practice

Where a retailer offers goods manufactured by a particular producer and uses that producer’s trademark solely to inform consumers about the available products, the trademark performs its primary function of indicating the commercial origin of the goods.

This approach is reflected in Ukrainian case law. In case No. 925/329/19 (Supreme Court, Commercial Cassation Court, decision of 17 September 2020), the Court held that the retail sale of goods through an online store, including the display of products bearing a trademark, does not constitute the use of the mark in relation to Class 35 services. The Court distinguished advertising services—which require a contractual relationship between a service provider and a client—from a retailer’s own offer of goods for sale, which constitutes a public offer under Article 699(2) of the Civil Code of Ukraine. Since the retailer was offering its own goods for sale rather than providing advertising services to third parties, its activities did not amount to trademark use in respect of Class 35 services.

EUIPO practice

Recent European practice, however, demonstrates an evolution of this approach. A notable example is the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 May 2025 in case R 2472/2023-4 concerning the cancellation of the word mark RITUALS.

The Board confirmed that retail services relating to one’s own goods may constitute genuine use of a trademark in Class 35, provided that the activity goes beyond the mere sale of goods. The Board emphasized that Rituals’ activities were not limited to selling products but included a comprehensive brand promotion strategy and an organized retail concept. This finding is particularly significant because, traditionally, advertising one’s own goods has not been regarded as an advertising service within the meaning of Class 35.

According to the Board of Appeal, where independent promotional activities extend beyond ordinary selling and create a distinct consumer experience, they may qualify as retail services in Class 35 even in the absence of a third-party client.

In particular, the Board found that Rituals’ carefully curated product assortment, in-store product demonstrations and selective distribution system were intended to encourage purchasing decisions and enhance the customer experience, thereby satisfying the definition of retail services under Class 35.

Conclusion

The mere sale of goods does not, in itself, constitute trademark use in relation to Class 35 services. The decisive factor is the nature of the activity and whether the trademark identifies the goods themselves or a separate service relating to their promotion or sale.

At the same time, recent European case law suggests that the distinction between ordinary retail activities and retail services is becoming increasingly nuanced. Therefore, when selecting classes for trademark registration or assessing potential infringement, businesses should consider not only the formal wording of the Nice Classification but also the actual manner in which the trademark is used.

Under certain circumstances, even a manufacturer promoting and selling only its own goods may be able to rely on Class 35 protection. However, this requires that its activities go beyond ordinary sales and create a distinct retail or consumer experience.

Author: Mariana Yermenchuk