By Manuela Macchi, Partner, KELTIE LLP
In April 2013 FC Barcelona applied for the registration as a Community (EU) Trade Mark of the silhouette of its crest in relation to a range of goods in classes 16 (paper goods, stationery, etc), 25 (clothing, footwear, headgear) and services in class 41 (including sports activities).
The mark for which FC Barcelona was seeking registration is the following:
OHIM (the EU body responsible for the registration of trade marks) rejected the application on the grounds that the mark was devoid of distinctive character and, hence, did not meet one of the criteria necessary for registration.
FC Barcelona appealed the decision, having also submitted evidence materials in support of their argument that, if the mark were to be found inherently non-distinctive, it should have nonetheless been registered on the basis of distinctiveness acquired through use.
The 2014 Board of Appeal Decision (here available in French and Spanish only) was further appealed by FC Barcelona before the EU General Court, who ruled on 10 December 2015 in favour of OHIM, confirming the rejection of trade mark registration for FC Barcelona’s crest silhouette (2015 Decision here, English summary but full decision available in French and Spanish only).
In the case before the EU General Court, FC Barcelona argued, in particular, that the crest silhouette possessed a certain creative quality, especially if compared with other crests on the market. It also referred to a CTM registration granted by OHIM for the silhouette of the Harley Davidson crest and other similar marks granted registration in Spain, albeit admitting that OHIM is not bound by precedents. The Harley Davidson crest referred to is the following:
The author of this article does feel some sympathy with FC Barcelona on this point. However, she also notes that the Harley Davidson crest was filed in 1997 and Case Law has much developed since then on the subject of distinctiveness required for the registrability of figurative marks consisting of simple and/or geometrical shapes (not least the 6 November 2014 EUCJ Decision T-53/13 in Vans v OHIM).
The EU General Court dismissed FC Barcelona’s appeal on all accounts, ruling, in particular that:
- The crest silhouette is not particularly capable of attracting the attention of consumers as a sign indicating the origin of the goods/services carrying that mark.
- The silhouette of a crest does not differentiate itself much from the basic shapes generally used in various commercial sectors as a decorative element.
- Therefore, the crest silhouette does not possess the inherent distinctive character necessary for registration.
- With regard to the evidence of acquired distinctiveness submitted by FC Barcelona, this was insufficient to prove acquired distinctive character of the mark in the EU, as it consisted primarily of documents (such as newspaper and Wikipedia extracts and information on the club’s social media activities), but none of the evidence submitted enabled to draw conclusions on the perception of the crest silhouette in itself by a significant portion of the relevant public, i.e. FC Barcelona failed to prove that the public would recognise goods carrying solely the crest silhouette as originating from FC Barcelona.