The European Court stopped registration of ‘El Clasico’ as a trademark

The General Court of the European Union has ruled in case T-809/19  Nacional de Fútbol Profesional v EUIPO.

This dispute concerns an attempt for registration of the following European trademark in class 41:

The EUIPO issued a refusal based on absolute grounds – descriptiveness and lack of distinctive character.

As it is well-known among all football fans ‘El Clasico’ is a term used for matches between Real Madrid and Barcelona, two of the most famous football clubs in the world.

The decision was appealed.

According to the Court, the meaning of the phrase is for something classic, conventional or usual because of which it is not distinctive for the services in class 41. What’s more this is a term used for the above mentioned football match which is considered to be a classic sport event.

The Court dismissed all evidence for acquired distinctiveness. The fact that ‘El Clasico’ is very popular among football fans is not enough in order a distinctive character to be proved. There was no evidence that this term has served as a source of trade origin related to the services in class 41. The Court considered that there was no commercial link with the trademark applicant that was established by the sign.

Another interesting moment here is the fact that both clubs Real Madrid and Barcelona filed oppositions against this trademark based on their reputation as football clubs.

Recently there was a similar case with a trademark application for ‘El Clasico’ in Japan. Although the Patent Office initially refused the mark, the Board of Appeal allowed it stating that for the Japanese consumers the sign do not evoke strong associations with the football math. In addition the fact that it is written in foreign language contributes to its basic level of inherent distinctiveness.

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“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.