Wembley v Wembley Stadium: 0-1

The Wembley semi-professional  football club is on the way to lose its flowing European trademark registered for Classes 3, 6, 9, 12, 14, 16, 18, 20, 21, 25, 28, 32, 33, 35, 41, 43:


Although this mark received successful registration in 2012, four years later a procedure for cancellation was initiated by the Wembley Stadium based on a bunch of earlier trademarks Wembley Stadium and Wembley.

EUIPO issued a decision for cancellation one month ago. The reasons behind this are that the marks share identical or similar goods and the signs themselves are similar taking into account the fact that the dominant and distinctive element is Wembley. On top of that Wembley Stadium gave various pieces of evidence that its trademarks have acquired well-known status among consumers for the last 90 years.

This case is interesting because it clearly shows that not only the registration is vital for the future use of one mark but the initial search and clearing actions which goal is to secure the trademark use against such negative consequences.

Source: Lexology.