The Spanish Supreme Court rules on cases targeting football matches, LaLiga, and IP rights

The Spanish Supreme Court has recently ruled on two lawsuits that concern the broadcasting of sports events and the relation to intellectual property rights.

In the first case, the Spanish Football Federation LaLiga sued two media Atresmedia S.A. and Mediaset S.A. for using images and video clips from football matches without permission in light of the fact that the rights for broadcasting of these matches were granted to another company.

According to the Supreme Court, every media has the right to record images and broadcast short news reports including football matches and this is not against the exclusive broadcasting rights for the same events because it is of public interest.

In the second case, The Supreme Court has ruled that broadcasting football matches in bars or restaurants without paying the corresponding fee to LaLiga is not an intellectual property crime. The reason is that football matches do not fit into the definition of copyrightable work, that is to say, they are not literary, artistic, or scientific works. The Court did not consider matches as a performance of creative works. Because of this, every possible infringement of football match broadcasting should be regarded as a market and consumer crime under Spanish legislation.

Source: EUIPO.

The English Premier League filed trademarks for virtual goods that will be offered in the future metaverse

More and more companies have started to adapt their business strategies considering all-new blockchain technologies (NFT – non-fungible tokens) and the future metaverse – a digital world that will mimic the real one.

What draws our attention from an intellectual property point of view is that many big companies have started to file trademark applications for a variety of so-called virtual goods such as virtual burgers, virtual clothes, virtual shoes, etc.

At first glance, this may sound abstract and even silly but behind the scenes, it can be a completely new business opportunity. Imagine a virtual world where every avatar will be able to buy unique digital goods in the form of NFTs in order to support its social status. This can be a huge new opportunity for many companies to expand their sales into a new category representing virtual goods. And because the goods will mimic the real ones, they will be branded which in turn requires trademark protection. This will help companies to control who and how can offer virtual goods with their brands. This means profit.

In light of this,  The English Premier League filed the following two US trademarks for goods such as – downloadable virtual goods for use online and in online virtual worlds; Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, sportswear, football shirts, eyewear, bags, sports bags, backpacks, sports equipment:

In that way, the English Premier League will be able to monopolize ist signs for use in the metaverse securing a tool for fighting against infringers.

There is a good chance such intellectual property protection strategy to become a key factor for the future virtual business models.

Source: Findbold

FIFA won a trademark dispute against PUMA regarding the upcoming World Football Cup in Qatar

The Swiss Federal Supreme Court has ruled on a trademark dispute between FIFA and the German sportswear producer PUMA.

The case concerns the following Swiss trademarks registered by the Puma for classes 18, 25, and 28: “PUMA WORLD CUP QATAR 2022” и “PUMA WORLD CUP 2022”.

FIFA as an organizer of the World Football Cup wasn’t impressed by these registrations and attacked them in an attempt to cancelation. The ground for this, however, wasn’t FIFA’s early registered marks for WORLD CUP QATAR 2022 and WORLD CUP 2022 but the misleading nature of the later marks. According to the World Football Federation, reading the marks, consumers can conclude that Puma is the title sponsor of the event which was not the case.

The Court agreed and upheld these arguments. The parts WORLD CUP QATAR 2022 and WORLD CUP 2022 have a direct and clear message that is associated with the World Football Cup because of which such misleading result is possible.

At the same time, the Court upheld PUMA’s counterclaims that FIFA’s earlier marks were descriptive and not distinctive, however, leaving the door open for proving acquired secondary distinctiveness.

Source: Kluwer Trademark Blog

AC Milan lost a dispute regarding its EU trademark

The General Court of the European Union has ruled in case T-353/20 AC Milan v EUIPO, InterES.

The well-known Italian football club AC Milan has filed an application for the following European trademark for different goods including stationery and office supplies:

The German company InterES Handels- und Dienstleistungs Gesellschaft mbH & Co KG has filed an opposition against this application based on its earlier German word mark MILAN with priority from 1984, registered for similar goods.

The EUIPO upheld the opposition finding both marks similar. The decision was appealed, however unsuccessfully.

First and foremost, the Court considers that the owner of the earlier mark proved genuine use. Although this mark has been used in combination with a figurative element representing the head of a bird, this by itself cannot alter the distinctive character of the mark where the dominant element is still the word MILAN.

When it comes to the comparison of both trademarks, the Court finds that although the mark applied for consists of graphic elements and a year, the dominant element that attracts the consumer’s attention is the word part AC MILAN, which is dominant in the mark’s composition.

According to the Court, although some consumers will recognize the latter mark as associating with the football club, the word MILAN in both signs refers mainly to a city in Italy.

With regard to the contention by the football club that consumers cannot be confused between the mark because AC Milan has a strong and long-lasting reputation, the Court reminds that in case of similarity assessment the only reputation that is relevant is that one of the earlier marks if there is such. The reputation of the mark applied for is irrelevant.

Taking into account all facts and arguments, the Court upheld the opposition.

Mario Balotelli won a trademark dispute for “MB45” in Italy

The well-known Italian footballer Mario Balotelli won a trademark dispute in Italy.

In 2013, the Italian individual Mr. Gabriele Casagrande registered a trademark “MB45” for class 25 – clothing, shoes, headgear. This mark was duplicated as a European mark and after that both were transferred to a Lithuanian company.

In 2015, finding about this mark, Mario Balotelli initiated a lawsuit asking for invalidation of the sign and the domain name “www.mb45.it”. The grounds for this were the fact that “MB45” is the Balotelli’s pseudonym. MB means Mario Balotelli and 45 is the number of the jersey that he uses. What’s more this sign was used on shoes produced and sold in collaboration with Puma in 2013.

Gabriele Casagrande disagreed with these accusations, stating that his mark “MB45” was inspired by the name of a tugboat of the Russian Navy Morsokoy Buksir with the same name.

The Court in Rome wasn’t impressed by this argument and invalidated the mark. According to the Court, the consumers in Italy, especially the football fans, are quite familiar with “MB45” as an indication related to Mario Balotelli. Additionally, the goods related to Gabriele Casagrande’s mark are typical and common products that famous people and sportsmen used their names or indications for.

The application for the later mark was made only a few days after Mario Balotelli, bearing “MB45”, was included in media materials. Because of this, the application for the mark was deemed as made in bad faith. The same conclusion was reach for the domain “www.mb45.it”.

Source: Martini Manna Law Firm – Margherita Stucchi for Lexology.

A Danish hit against the football Super League

As it is already well-known the so-called Super League failed to emerge in the football world after serious critics from fens, football authorities and even politicians. And although the league is now only a dream for some of the involved clubs, problems regarding it continue. This blog mentioned some time ago that the organizers of this new project filed the following European trademark for classes 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 45:

We predicted that this trademark application could have oppositions based on earlier marks for Super League. However, our search missed catching some of the variations of this mark. And one of these earlier variations emerged on the scene with full force.

The Danish Football Federation filed an opposition against the above mentioned Super League mark on the ground of the following two marks:

–   – № VR 2009 01457, Filing date: 02/04/2009

SUPERLIGA – № VR 2001 00163, Filing date: 10/08/2000

Both of the marks are registered in class 41: creating and organizing sports activities, including sports events, all related to football.

A list of evidence was added to the opposition showing how these marks are used in the market. In other words SUPERLIGA is the name of the Danish national football championship which was founded under this name in 1991.

The Danish Federation has one European trademark for SUPERLIGA too which, however, was not mentioned in the opposition.

It is interesting what the result of this dispute will be. At first glance, the mark applied for and the earlier signs are similar enough at least from phonetic and conceptual point of view. What’s more they cover similar and identical services.

The key moment here can be to what extent Super League is a distinctive sign. Our research shows that this name is used for other championships too, for instance the Serbian one is called Superliga. In addition the Polish handball championship has the same name, registered as a combined Polish trademark for sport competitions.

Having said all of that, the question is why such a name should be selected for a trademark as a whole. Yes, on one hand it is logical for sport tournaments, but from another, if the organizers want to license this mark, to sell merchandising etc., it should be distinctive enough, otherwise its protection and enforcement could be difficult at least at the start without secondary acquired reputation.

Whether the new Super League will register successfully a trademark in the EU?

The news for the launch of the Super League was one of the biggest in the European football last week. It spurred a great debate and a lot of reactions most of which not so positive. Many football federations, including UEFA and FIFA as well as many football fans expressed their concerns about the new league formed by 12 of the biggest clubs in Europe: Arsenal, Chelsea, Liverpool, Man City, Manchester United, Tottenham, Real Madrid, Barcelona, Atletico Madrid, Juventus, Inter Milan and AC Milan.

Apart from the pure football aspects of the story, it is interesting to be noticed that there is now an application for the following European trademark in classes 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 45:

The applicant is still not indicated but this representation of the mark is equal to what the founders of the new league have already announced.

A quick search in TMView database for Europe shows a lot of early registered trademarks for some of the above mentioned classes. For example:

International trademarks:

  • SUPER LEAGUE – № 1350297, Дата на заявката: 01/12/2016, Класове: 28, 41 
  • SUPER LEAGUE – № 1514680, Дата на заявката: 01/11/2019, Класове: 09, 18, 25, 28, 35, 38, 41

 Italian trademarks:

  • SUPER LEAGUE – № 2002901066715, Дата на заявката: 26/11/2002, Класове: 25 SUPERLEAGUE – № 2018000036641, Дата на заявката: 19/11/2018, Класове: 25, 28, 35, 41

 European trademarks:

  • SUPER LEAGUE – № 016389777, Дата на заявката: 21/02/2017, Класове: 9, 25, 28, 41
  • European Super League – № 017985567, Дата на заявката: 14/11/2018, Класове: 25, 41

Spanish trademarks:

  • European Super League – № M4091266, Дата на заявката: 29/10/2020, Класове: 41

It will be interesting whether the new trademark application will receive a successful registration or there will be oppositions against it from the owners of the earlier rights.

Another interesting issue could be to what extent Super League is a distinctive sign for some of the goods and services, in particular for organization of sport events.