Background
In 2017, Liga Nacional de Fútbol Profesional (Spanish professional soccer league, hereinafter: LaLiga) applied to the World Intellectual Property Organization (WIPO) for the following International Registration designating the European Union for services in Class 41:
The EUIPO rejected the application in 2018 for lack of distinctiveness and merely descriptive character. LaLiga’s appeal was not successful. LaLiga then brought an action against the decision of the board of appeal before the European Union General Court (GC).
Judgment of the GC (Judgment of 24.2.2021, T-809/19)
In the judgment, which has so far only been published in Spanish and French, the GC addressed the questions of whether the sign is actually devoid of distinctive character and whether it is exclusively descriptive in nature. The court dealt extensively with various possible interpretations regarding the understanding of the word "El Clasico".
At the outset, the court emphasized that a sign is ineligible for protection for lack of distinctiveness only if there is a sufficiently direct and concrete relationship between the sign and the goods and services in question to enable the relevant public to perceive, directly and without further reflection, a description of the goods and services in question.
With regard to the relevant public, the GC stated that the word element "El Clasico" is understood both by the general public and, more so, by specialist circles, since it does not consist of specialist terms but of words in common usage.
The sign is a composition of the Spanish words "el" (the) and "clásico" (classic). Despite the lack of accent on the word 'Clasico' and its capitalization, it is sufficiently clear to the relevant public that the sign element refers to the Spanish word 'clásico'. It is common knowledge that, for the Spanish public, the term 'clásico' designates something traditional or characteristic.
The combination of the words "el" as a definite article and "clásico" as an adjective does not result in a change in the descriptive character of the adjective "clásico", but merely transforms that word into a noun (classic) referring to someone or something classic. Consequently, the definite article "el" generates an expression whose meaning is not different from that of the term "clásico".
Further, the term "el clásico" is generally used to designate a sporting contest between teams with significant rivalry and that this term is understood not only by the relevant Spanish-speaking public, but also by the relevant French-, German-, Dutch- and Portuguese-speaking publics. However, unless the circumstances indicate otherwise, "el clásico" usually means the match between FC Barcelona and Real Madrid. That said, even on the basis of such an understanding, the meaning of the expression is not limited exclusively to the description of that sporting event, which is organized exclusively by LaLiga.
The history of origin of the mark applied for also supports such an understanding, according to which the expression 'el clásico' was intended to describe a match between two teams inspired by a historic sporting rivalry which is repeated at least annually in the context of the soccer championship organized by the appellant in Spain. It is, therefore, the most repeated and, thus, the most "characteristic" match of the championship and, consequently, a classic match in that championship.
Moreover, the term 'el clásico' has become relatively common in the context of sporting competitions and events over the years to designate matches between teams with great rivalry; also for various sports other than soccer, such as basketball, and outside of Spain, in particular in France (Olympique Marseille v Paris Saint-Germain, but there also under the name 'le classique' or 'le classico') and Germany (Borussia Dortmund v Bayern Munich).
Accordingly, the GC concluded that the sign applied for could not fulfill the essential function of a trademark, namely to identify the commercial origin of the designated goods or services, and thus, that the EUIPO's rejection of the international extension to the European Union was legitimate.
The GC is also not convinced by the applicant's argument that the mark has acquired sufficient distinctive character as a result of its use. According to the Court's established case law, this also requires that at least a significant part of the relevant public recognizes the goods or services in question as originating from a particular undertaking on the basis of the mark. However, according to the GC, the evidence submitted by the applicant does not prove such a perception by the relevant public, but rather that the term is used by the public to describe a soccer match between two rival Spanish teams, and not necessarily the classic match Barcelona v. Madrid. Consequently, the mark is not an indication of the commercial origin of certain services in that respect either.
Comment
The judgment, which is likely correct in substance, is in line with case law already handed down in Germany on so-called event trademarks (e.g. World Cup 2006; World Cup 2010; European Championship 2012) (BGH, decision of April 27, 2006, I ZB 96/05 and 97/05; BPatG, decision of November 25, 2009, 25 W (pat) 38/09; BPatG, decision of November 25, 2009, 25 W (pat) 35/09). Similarly to the GC, the German Federal Court of Justice (BGH) ruled in 2009 with regard to the trademark "Fußball WM 2006" that this was a customary name for the sporting event it described (Soccer Worldcup 2006) and that it would be perceived by the public as a descriptive indication for the event itself. This designation therefore lacks the suitability to assign the goods and services to only one specific company.
It follows from this that event trademarks will probably continue to be largely ineligible for protection unless the event name can only be clearly assigned to a specific event of a specific organizer and the public also clearly understands the event designation as a business indication of origin.
Authored by Thorsten Klinger
