Old trade marks and online retail: is your registration enough?
Attorney at Law | Certified
Intellectual Property Law Attorney
Many trade marks were filed at a time when most sales took place through brick‑and‑mortar stores and traditional mail‑order catalogues. Today, online shops, marketplaces and other digital channels dominate – and many trade mark owners rightly ask: Does my older trade mark still cover today’s online retail activities, or do I need additional filings?
The recent decision of the Second Board of Appeal of the EUIPO in the “ABC STORES” case of 7 April 2026 (R 1175/2025-2) provides important answers – particularly for trade marks that were already filed in the early 2000s.
The “ABC STORES” case in a nutshell
MNS Ltd., based in Hawaii, operates several convenience stores under the sign “ABC STORES” in Hawaii and also runs an online shop through which EU customers can place orders. The EU trade mark “ABC STORES” was filed in February 2001 and registered on 2 May 2003 for “retail convenience services with the exception of shoe stores”.
In 2022, a competitor, Eurocash, filed a revocation action for non‑use against the mark. Its main argument was that the mark was protected only for physical convenience stores, whereas MNS was using it essentially in online and mail‑order trade directed at customers in the EU. In Eurocash’s view, invoices, screenshots from the online shop and sales figures could therefore not qualify as “proper” use for the registered retail services.
MNS countered that its business model had been consistent for years: tourists discover the brand in the physical “ABC STORES” shops in Hawaii and later place repeat orders from home via the online shop. To support this, MNS submitted invoices to customers in various EU Member States, screenshots of the online shop showing the “ABC STORES” sign, and a sworn statement detailing European sales.
The key issue: 2001 – brick‑and‑mortar only, or already online?
The filing date 2001 was crucial. Traditional mail‑order commerce was well established at that time. However, online retail was still in its infancy and far from being as ubiquitous – technically and legally – as it is today.
This raised the central question: Must “retail services for goods of everyday use” be interpreted strictly as services provided in a physical store because the mark was filed in 2001 – or does the term also extend to online sales, provided the nature of the service is the same?
The Cancellation Division initially adopted a narrow view, essentially tying “retail convenience services” to the image of a local convenience store with a physical shop front, shelves and extended opening hours. Online and mail‑order sales were therefore considered to fall outside the scope of the registered services.
The Second Board of Appeal clearly rejected this approach in its decision of 7 April 2026.
What the EUIPO Board of Appeal clarified
The Board of Appeal made three key points:
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Retail services are functional – not tied to a specific channel.
The focus is on offering goods of everyday use to consumers in a convenient, easily accessible manner. Whether this happens in a physical shop, via mail order or through an online shop does not change the nature of the service.
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Sales channel is secondary – the service itself matters.
The distinction between brick‑and‑mortar stores and online shops concerns only the mode of delivery, not the category of service. Online retail of everyday consumer goods therefore falls within the scope of the registered retail services, provided the mark is used for these activities.
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Older trade marks are not retroactively “narrowed down”.
“ABC STORES” was filed in 2001, i.e. before the CJEU’s Praktiker judgment of 2005, which requires applicants to specify the goods to which retail services relate. The Board emphasised that such later requirements must not be applied retroactively in a stricter way to earlier registrations. The concrete scope of protection of broad, older retail specifications is instead determined by the evidence of actual use.
On this basis, the Board concluded that the evidence submitted by MNS showed genuine use of the mark for retail services relating to specific everyday consumer goods – in particular food and beverages, personal care products, cosmetics, household goods and tourist‑oriented products such as souvenirs. For these groups of goods, the trade mark remains on the register.
What does this mean for trade mark owners?
The “ABC STORES” decision is reassuring for many trade mark owners – but it also highlights where you should look more closely.
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Online retail can constitute genuine use – even for older marks
If you use your mark visibly in your online shop, on invoices and in shipping documents, and you sell everyday consumer goods to end customers, this can qualify as use of “retail services” – even if the mark was filed before the e‑commerce era really took off.
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Sales channels are allowed to evolve
Retail services are, in principle, channel‑agnostic. You do not have to file a new trade mark every time you add a new channel – such as an online shop, sales via platforms or a more integrated, multi‑channel customer journey.
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Product innovation is a different story
Recognising new sales channels does not mean that every technical product innovation is automatically covered. An older trade mark registered simply for “television sets” will usually not, by itself, cover a modern streaming box with integrated gaming and smart‑home functions. A mark originally registered only for traditional paper calendars will typically not extend to a sophisticated software solution for online scheduling and team collaboration.
In such situations, a supplementary trade mark filing is often advisable to ensure that important new product categories are properly protected.
Three practical questions to ask about your trade mark portfolio
As a trade mark owner, it is worth taking a critical look at your existing registrations – especially if your mark has been on the register for many years:
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Do the registered goods and services still cover your current products?
Have your products evolved so much that the old wording no longer describes them adequately (for example, from simple “television sets” to complex streaming and smart‑home devices)?
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Are your current sales channels reflected in practice?
Do you primarily use your mark online, on platforms or in hybrid models – and is the mark clearly visible there (on the shop, during checkout, on invoices)?
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Are you prepared to prove genuine use if challenged?
Do you have organised evidence (invoices, website screenshots, sales summaries) for the past years that would allow you to demonstrate genuine use of your mark in the EU if a competitor filed a revocation action?
Conclusion: An old trade mark for a modern business model?
The “ABC STORES” decision shows that your trade mark is allowed to evolve with your business model, at least when it comes to sales channels. At the same time, it remains your responsibility as a trade mark owner to review regularly whether your registrations still cover your current products and services – and to update your portfolio where necessary.
If you are unsure whether your existing marks adequately protect your online sales or new product lines, a structured portfolio analysis is the next sensible step. It shows which of your marks are on solid ground – and where targeted new trade mark filings are advisable. I am happy to support you with this: in a focused portfolio review, I analyse your existing marks, identify gaps and recommend where a new filing or adjustment makes sense – ideally before a competitor puts your registrations to the test in revocation proceedings.