“El Clasico” between Barcelona and Real Madrid can be a trademark in Japan

La Liga, the Spanish Football Federation, won a trademark dispute in Japan regarding its attempt to register the following trademark for Class 41 – sporting activities, production of sports events, sports information services, and other services:

The Japan Patent Office refused to register this sign based on absolute grounds – a lack of distinctive character.

As it is well-know, “El Clasico” is one of the most famous football matches in the world, between FC Real Madrid and FC Barcelona. Its history dates back to 1930s and through the years this match has become recognizable among football fens all around the world.

Based on this, the Patent Office considered that consumers will connect the sign with this particular match and from that point of view they can mistake its nature when used on service unrelated to the football match between these two teams.

In the appeal, however, the Board of Appeal overturned this decision, stating that the sign is distinctive enough and capable to be a trademark. According to the Board the consumers in Japan would not relate the sign directly with this match for the relevant services, at least because it is written in Spanish.

What’s more the Board didn’t find any facts that “El Clasico” was commonly used to represent a specific nature or quality in connection with the services for which the mark was applied for.

Source: Masaki MIKAMI, Marks IP Law Firm.

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