Red card for the “El Clasico” trademark

#ElClasico #IP #trademark

Friday 5 March 2021 - A European trademark that is applied for, shall not be registered if it has no distinctive character or if it is descriptive. The General Court confirmed that the “El Clasico” trademark couldn’t take this hurdle.

Yellow card in the first half: “El Clasico” is descriptive according to the EUIPO’s Board of Appeal

Trademarks should indicate commercial origin, and cannot be descriptive of the goods or services for which the trademark is applied for. But when is a trademark descriptive?

On 17 February 2017, the Liga Nacional de Fútbol Profesional (LaLiga), applied for an international trademark under number 1379292, designating the European Union (“EU”), for the following figurative sign:

The application concerned several services in Class 41, such as providing of education, training, entertainment services, sporting activities, and other related services.

The application was notified to the European Intellectual Property Office (EUIPO). The examiner refused the registration of the trademark on the ground that it was descriptive and lacked distinctive character.

LaLiga appealed this decision, but without success. The EUIPO’s Board of Appeal dismissed the appeal on 1 October 2019.

Second yellow card in the second half: the General Court agrees, and “El Clasico” is out of the game

On appeal, the General Court of the EU examined when a trademark is descriptive and determined whether the “El Clasico” trademark was indeed to be considered as descriptive (judgment of 24 February 2021, T-809/19).

First of all, the Court reiterated its prior case law setting out the principles to assess descriptiveness. It recalled that, for a trademark to be descriptive, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public to immediately, and without further thought, perceive a description of the category of goods and services in question or of one of their characteristics. The Court highlighted that:

• Such characteristics can be commercially essential or ancillary. However, they must be ‘objective’ and ‘inherent to the nature of that product’ or service and ‘intrinsic and permanent’ with regard to that product or service.

• A descriptive sign is not capable of identifying the commercial origin of the goods or services concerned. Hence, it cannot fulfill the essential function of the trademark.

• The ground for refusal based on descriptiveness can apply even if the trademark is descriptive only in part of the EU, and even if only one of the meanings of the trademark is descriptive.

Next, the General Court turned to apply those principles to the “El Clasico” trademark. It found that the word “clasico” refers to the Spanish word “clásico”, which is understood by the Spanish-speaking public as an indication of something habitual, typical or classic. The addition of the article “el” merely turns the adjective into a noun, but does not change the word’s meaning.

Further, the Court established that the term “el clasico” had become quite common to refer to sporting encounters between teams with increased rivalry, for different types of sport apart from soccer, such as basketball, and this also outside of Spain, such as in France and Germany.

As a conclusion, the Court considered that all the services covered by the application at issue could be recognized by the Spanish-speaking public as indicating services with a classic theme or traditional character. As regards the services related to sport, they could be recognized by a larger public as having characteristics specific to a sporting rivalry.

Consequently, the General Court confirmed the EUIPO’s finding that the trademark was indeed descriptive for all concerned services and, as such, lacked distinctive character.

The Court recalled that, like any other sign which is not inherently distinctive, a descriptive sign can, nevertheless, still be registered, if it has acquired distinctiveness through use. This requires that at least a significant proportion of the relevant public identifies the products or services at issue as originating from a particular undertaking, and this for the part of the EU where the trademark was not distinctive to begin with.

Unfortunately for LaLiga, the General Court ruled that the latter had failed to demonstrate such acquired distinctiveness through use. The use made by LaLiga of the expression “El Clasico” only concerned descriptions of a soccer match between two rival teams in Spain. The relevant public would not perceive the goods or services covered by the trademark application as originating from a specific undertaking because of the use that has been made of the sign.

Conclusion: will there be a rematch?

LaLiga can still appeal the General Court’s judgment to the Court of Justice of the EU, but only on points of law. Furthermore, since 1 May 2019, the Court of Justice will only allow such an appeal if it raises an issue that is significant with respect to the unity, consistency or development of EU law. It is, therefore, uncertain whether LaLiga will be able to have a successful rematch before the EU’s highest court.

This case is a clear example that a well thought out and correctly executed trademark strategy is indispensable to avoid a disappointing outcome after long legal battles.

For this article, the Atfield team was able to rely on the dedicated assistance of Intellectual Property department lawyers from ALTIUS:

Olivier Vrins (This email address is being protected from spambots. You need JavaScript enabled to view it.)

Peter Blomme (This email address is being protected from spambots. You need JavaScript enabled to view it.)

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