The General Court shows “La Liga” the red card in its appeal on registering the “El Clasico” trademark

On February 24, the General Court of the EU published its judgment (case T-809/19) dismissing the appeal filed by the Liga Nacional de Fútbol Profesional (“La Liga”) against the European Union Intellectual Property Office (“EUIPO”) resolution of October 2019 denying the registration of the figurative mark “El Clasico”, with no accent, in bold and in white on a black background, as a trademark:

This dispute dates back to February 17, 2017, when La Liga obtained the international registration of the trademark from the World Intellectual Property office (“WIPO”), which is designated by the European Union,. The trademark was applied for under various services of class 41 of the Nice Classification, namely: general education, training, entertainment and sporting activities services, as well as other specific services of those categories.

However, the EUIPO denied the application to register it as an EU trademark. La Liga appealed and the EUIPO Second Board of Appeal dismissed the appeal on the following grounds: (i) the figurative sign of the mark constituted a standard font in white on a black background; (ii) to deny the registration of a trademark it is sufficient that it be descriptive or lack distinctiveness, as with the expression “el clasico,” which would be conceived by the Spanish, French, German, Dutch and Portuguese public as an expression relating to a sporting encounter not limited to the sphere of soccer; (iii) the services for which the registration was requested constituted general categories of services whose common feature was always having a theme; (iv) the relevant public would associate the trademark with the concept of sporting rivalry, given its direct and specific relationship with the services requested; (v) the simplicity and typicality of the overall elements of the trademark did not give a different impression from that transmitted by the word elements “el clásico,” and the definite article “el” did not alter the descriptive nature of the trademark; (vi) the fact that La Liga was the only provider of the services for which the registration was requested was irrelevant; (vii) the existence of prior national registrations of the terms comprising the trademark did not alter the conclusions drawn and the trademark lacked distinctiveness due to its descriptive nature in terms of the services; and (viii) there was no distinctiveness acquired by use, since the sign had hardly been used in the manner of the requested registration.

La Liga’s reply was that the trademark could not be considered descriptive or lacking in distinctiveness based on three reasons, on which the General Court of the EU (GCEU) ruled separately in its resolution.

First reason. Infringement of Article 7.1.c) of Regulation 207/2009 on the Community trademark in ruling the trademark descriptive

Under that article, trademarks exclusively comprising signs or indications that may serve to designate the kind, quality, intended purpose, value, geographical origin or time of production or other characteristics of the goods or service will not be registered. The rule considers that this descriptiveness stands in the way of the trademark’s essential function: to identify the commercial origin of the good or service in question.

This descriptiveness must be analyzed (i) in view of the relevant public’s understanding of the sign and (ii) in view of the corresponding goods and services. The GCEU refuted La Liga’s submissions from both viewpoints and recalled that it is sufficient that those signs and indications may be used for the corresponding descriptive purposes.

Regarding the relevant public, it stated that this consists of both a general and a specialized public, and the presence of the latter cannot have a decisive impact on the assessment of the descriptive nature of the trademark. Since the sign to be registered contains terms of common language, both publics will be able to understand it easily.

With regard to the descriptive nature of the terms and signs comprising the trademark, the GCEU underlined the importance of their analysis as a whole. The resolution states that the standard nature of the font in the trademark does not yield any impression and that, despite the absence of an accent, the term “clasico” is easily understandable as the Spanish word “clásico,” meaning traditional. This is not changed by the inclusion of the definite article “el,” which makes the stated adjective a noun. Therefore, it is reasonable to assume that the relevant Spanish-speaking public may perceive that the trademark describes an intrinsic characteristic of the services: their traditional nature.

Furthermore, the GCEU added that the expression “el clásico” has been used to refer to encounters not restricted to soccer or exclusively to the tournaments organized by La Liga and covers sporting rivalry in numerous sports and applies to several encounters organized by third parties. Therefore, this concept is understood not only by a Spanish-speaking public, but also by the German, French, Dutch and Portuguese public. This confirms that the term “el clásico” is also descriptive since it evokes the idea of sporting rivalry.

The GCEU also dismissed the submission that the trademark has been registered nationally, since the EUIPO is autonomous and is not bound by national authorities.

Second reason. Infringement of Article 7.1.c) of Regulation 207/2009, as La Liga believes the trademark has its own distinctive character

The General Court’s response is that it is sufficient for just one of the absolute grounds for denial to apply — such as the descriptive nature of the trademark — to deny its registration.

Third reason. Infringement of Article 7.3 of Regulation 207/2009 in ruling that the trademark had not acquired distinctive character through its use

The GCEU pointed out that, for this exception to Article 7.1.b) and c) of Regulation 207/2009 to apply, at least a significant part of the relevant public must identify the goods and services it designates as a result of the trademark and attribute them a specific business origin. In other words, that identification of the goods and services must be a result of the “use of the trademark as such.”

Furthermore, proving that distinctiveness has been acquired requires showing that the trademark did not initially have it. In this regard, the Court considered the evidence provided by La Liga insufficient and highlighted that the distinctiveness must have been acquired by use prior to the registration application, while the trademark had actually been used very little.

The GCEU therefore dismissed the three reasons offered by La Liga and the appeal in its entirety.

Author: Paula Conde