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.

Puma prevailed over Ruma in a trademark dispute

Puma won one interesting trademark opposition in Finland. The case concerns a trademark application for RUMA in classes 25 and 28 (clothes and toys among others).

Against this application an opposition was filed by Puma based on early registered trademark for PUMA in the same classes.

The Finish Patent and Registration Office dismissed the opposition considering the two marks as not confusingly similar. The reasons were the different first leters and the conceptual dissimilarity.

The decision was appealed. The Court upheld it after which the decision was applied again.

The Supreme Administrative Court overturned the decision finding both marks visually similar despite the first letters that are different. According to the Court  the letters P and R are similar in appearance.

The Court questioned whether consumers would understand directly the meaning of PUMA as a word. Even if this was the case PUMA was distinctive for all the goods in classes 25 and 28. What’s more because of its reputation it has even stronger distinctive character. The interesting part here was the fact that the Court concluded on the existence of PUMA’s trademark reputation without submitted evidence in the proceeding.

According to the Court, when it comes to clothes they are often sold in stores where consumers choose between them mostly based on their visual aspects and not so based on conceptual or phonetic characteristics.

Taking all of this, the Court considered that both marks are similar enough.

Source: Johanna Säteri, Jenni Ihalainen – Berggren Oy. 

New Balance won a $2.8 million lawsuit in China

The US sportswear company New Balance has won an important lawsuit in China related to its trademark.

The case at hand concerns the Chinese company New Barlun that uses the letter N on shoes. This letter is a New Balance well-know trademark all over the world. However, New Barlun succeeded to registered the sign first in China.

The US company initiated a lawsuit seeking invalidation of the mark based on a bad faith registration that took advantages of the New Balance’s trademark global reputation.

The court concurred with the US company finding bad faith approached by New Barlun, which was proven by the fact that the Chinese company failed to cease infringement despite the court issuing an interim injunction order.

The Court ordered $2.83 million in damages to New Balance for the trademark infringement. This is one of the biggest sum awarded by a Chinese court in case of trademark infringement in the field of sportswear.

Another indicative moment regarding this dispute is that trademark registration doesn’t mean a save harbor for the relevant applicant if the mark is registered in bad faith especially in light of worldwide well-known brands.

Source: WIPR.

Neymar won a dispute about his name in EU

The well-known Brazilian footballer Neymar has won a trademark dispute before the General Court of the European Union.

The case concerns a registered in 2012 European trademark NEYMAR in class 25  – Clothing, footwear, headgear, owned by Carlos Moreira.

The footballer filed a request for invalidation of this mark based on a claim that it is filed in bad faith.

The EUIPO invalidated the mark because of which Moreira appealed the decision.

The General Court confirmed the EUIPO conclusions that this sign has been filed in a bad faith.

According to the court, there were sufficient pieces of evidence that clearly showed the celebrity status of Neymar at the time when the application was filed. Because of his rising career, many football clubs have interest in him at that time. This generated serious media coverage.

In that regard, the Moreira’s claims that he didn’t know who Neymar was were dismissed.

Another negative point for Moreira was that at the moment when he filed an application for this trademark he did the same for another mark Iker Casillas which is the name of the former Real Madrid goalkeeper.

Source: WIPR.

MLS and David Beckham attacked Inter Milan in The US

The US Major League Soccer (MLS) filed an opposition against a US trademark application for INTER owned by the Italian football club Inter Milan for classes 9, 18, 21, 24, 25, 28, 41.

The main ground for this opposition was lack of distinctiveness and descriptiveness of the word INTER in relation to the football goods and services.

MLS started this proceeding because of its plans for the new Inter Miami football club, which will start playing in the league in 2020. The president and one of the shareholders in this club is David Beckham.

According to the trademark law in The US and around the world, the trademark owner has the right to use the mark, dispose of it and to prohibit third parties of using it.

In light of this, MLS considers the word INTER as not distinctive for the reason of which it has not to be monopolized by any sport club bearing in mind how many clubs use it such as Inter Turku, Inter Leipzig, Inter Baku, Inter de Grand-Goave, NK Inter Zapresic, Inter Moengotapoe, Inter de Luanda. Inter Club d’Escaldes, Inter Atlanta FC.

It is highly likely that this opposition will be successful but for goods and services which regard football as a sport. For those of the goods and services, however, where INTER has inherited distinctiveness, the trademark can be registered which at least will give some merchandising advantages to Inter Milan.

Most likely there will be negotiations between the clubs.

Source: SI.com.

Asics lost a lawsuit before the EU Court regarding its logo

The well-known Japan producer of  footwear and sports equipment Asics lost a lawsuit before the European Court regarding an opposition filed by the company against the following figurative European trademark for classes 18, 24 и 25:

Against this mark, Asics submitted the following earlier EU and Spanish marks in classes 18, 25 и 28:

The EUIPO rejected the opposition considering the signs as not confusingly similar. The decision was appealed but the European court upheld it.

According to the to Court:

It should be noted that the mark applied for is composed of four thin straight black lines with a serrated outline. Two of those lines, placed in parallel, go upwards diagonally from left to right and cross, in their middle, two other shorter parallel lines, going downwards diagonally from left to right.

As regards the earlier marks, they are composed of four thick black lines. Two straight lines go downwards diagonally from left to right, while moving slightly apart from each other, and cross two converging curved lines which go upwards from left to right. The convergence and crossing of the straight lines and the curved lines give the earlier marks, which may be perceived as the letter ‘x’ superimposed on the letter ‘v’ or on the character ‘’, an impression of movement.

Thus, even if the consumer does not recall details such as the size or thickness of the lines, the overall impression between, on the one hand, thick lines and curves forming a letter ‘x’ superimposed on a character ‘’ and, on the other hand, thin straight lines that can be perceived as a character ‘#’ inclined backwards to 45 degrees is so different that the consumer will not make a connection between the signs at issue solely on the basis that they are both composed of parallel lines crossing two other longer lines.

In the light of the foregoing, the Board of Appeal found correctly that the overall impression given by the marks at issue was different, which leads to the conclusion that there is no visual similarity.

The Asics’ argument that the signs are similar even more when the way how Asics’ marks are used on some of their products is taken into account was dismissed because the only thing which is relevant for the comparison is the way how signs are registered.

The well-known status of the earlier marks was not be considered too because the Court found that marks weren’t similar enough.

The full text of the decision can be found here.

Sports Direct lost an opposition against Fitness Direct in UK

WIPR reports about a decision of the UK Patent Office regarding the following trademark applications in Class 28:

Against these marks, an opposition was been filed by Sports Direct base on a family of earlier trademarks Sports Direct for the same Class of goods.

According to the UK IPO, there is no enough similarity between the respective trademarks which to create a confusion among the consumers. There is no visual similarity and only low level of phonetic similarity exists. What’s more, these marks have a low level of inhabitant distinctiveness due to the fact that Sports and Fitness are descriptive to the sports goods in class 28 and Direct associates with the access to them.

The IPO rejected the Sports Direct claims that the later mark can cause negative consequences for the company’s own brands and reputation because no pieces of evidence in that regard were been submitted or any other which to show a high level of reputation on the market.

More information here.