National Football league scores own goal with EUIPO trade mark decision appeal

Having fought hard to get a win, the National Football League fell at the final hurdle.

The National Football League first filed the application in 2017. The application was for the words ‘El Clasico’ in a black and white block font and filed in respect of class 41, namely sporting and entertainment events.

The application was filed with the EU Intellectual Property Office who at the time considered applications within the then 28 member states of the EU.

The EUIPO considered the application and refused it on the basis that it lacked in distinctive character and was descriptive.

This decision was appealed by the National Football League to the EUIPO Board of Appeal.

The Board of Appeal considered the appeal and determined the following:

  1. The figurative sign El Clasico was composed of Spanish words written in standard typeface and in white bold on a black background.
  2. The fact that the mark was descriptive or lacked distinctive character in one of the official languages of the European Union was sufficient to refuse registration.
  3. The words in question were written in standard typeface and in bold white on a black background and this does not add anything to the distinctive character or did not make any impression
  4. As regards the distinctive character of the mark applied for, the Board of Appeal concluded that there was no such character.
  5. In respect of the alleged distinctive character acquired through use, the Board of Appeal held that none of the documents submitted demonstrated that the sign was perceived by the relevant public as an indication of the commercial origin of the services. It also pointed out that the sign El Clasico had been used on a few occasions in the way in which its registration had been requested and, in any case, in a descriptive way to inform the public or making reference to a sports meeting between the soccer teams Real Madrid CF and FC Barcelona.

The Board of the Appeal therefore rejected the appeal. The National Football league therefore appealed again to the EU General Court.

The matter was considered by the Court who announced their decision this week. The Court confirmed that the actions of the Board of Appeal were correct and the appeal was dismissed again.

There are still avenues of appeal for the National Football League but it is unclear at this stage if they will pursue them.

If you have any questions about trade marks, please do not hesitate to get in touch with the Lawdit team today.

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