El Clasico: classic and descriptive terms of sporting events

 On February 17, 2017, the international figurative mark designating the European Union El Classics, No. 1379292, belonging to the Liga national de footboy professional, is registered by the World Intellectual Property Organization (WIPO). The registration is notified to the European Union Intellectual Property Office (EUIPO), which, after examination, totally rejects the trade mark application, on the grounds that it is descriptive and lacks any distinctive character. On October 8, 2018, the applicant lodged an appeal with the EUIPO but this was rejected by a decision of October 1, 2019. The applicant therefore applied to the General Court of the European Union so that her trademark El Classics could be registered.

In its decision of February 24, 2021, the General Court of the European Union analyzes the descriptive nature of the El Classics registration application and notes its lack of distinctive character.

The descriptive nature of the terms "el classics"

The Court recalls that a mark cannot be registered if it does not exercise its essential function which is to identify the commercial origin of its products and services (CJCE June 18, 2002, Koninklijke Philips Electronics NV / Remington Consumer Products Ltd , aff. C-299/99, pt 30, RTD com. 2002. 769, obs. M. Luby; ibid. 2003. 500, obs. J. Azéma; Owner ind. 2012, n ° 2, p. 38 -39, note A. Folliard Monguiral; RTD com. 2002. 769, obs. M. Luby; ibid. 2003. 500, obs. J. Azéma). Indeed, such a mark, which will be qualified as descriptive, must not be able to be the object of a monopoly but must remain free of access (CJCE 23 Oct. 2003, OHIM v. Wrigley, aff. C-191 / 01, pt 31, D. 2003. 3053, and the obs.). For descriptive character to be retained, a direct and concrete link must be established between the goods and services and the sign (Trib. EU, 7 June 2001, DKV v. OHIM (EuroHealth), case T-359 / 99, pt 36). For this, the relevant public must see immediately, and without further reflection, that the sign is the description of the goods and services or one of their characteristics. Regarding the relevant public, the judge confirms the appeal decision of EUIPO which considered that the relevant public, which is composed of the general public but also of professionals, has no impact on the reading of the descriptive character of the El mark. Clasico (pt 35). As the registration application is not made up of technical terms, it does not matter whether the relevant public is professional or lay. Regarding the description of the services or one of their characteristics, the General Court of the European Union analyzes whether the term "el clasico" can be perceived as a characteristic of the services in question, given that they do not directly designate services. First, the terms are analyzed separately: the term "clasico" means "classic" in Spanish while the term "el" is a definite article which means "the" in Spanish (pt 45). Then, in a second step, the terms are appreciated in their entirety (pt 39). The judge confirms that the term "el" does not, by itself, modify the meaning of the term "clasico", since it is a definite article relating directly to the term "clasico" (pt 46) . In addition, the latter supports the position of EUIPO that the presentation of the term in a black box has no impact on the perception of the terms 'el clasico', since it is devoid of a whimsical character ( pt 43). Thus, as a whole or separately, the terms "el Clasico" are perceived by the consumer targeted by the services to mean "something usual, typical or classic". In addition to this meaning, this combination of terms will also be perceived by the relevant public as referring to “a sporting match between two teams of strong rivalry” (pt 48). Thus, and contrary to what the applicant indicates, the terms "el Clasico" do not refer only to sporting events organized by the latter, but to various and varied sporting events (football, basketball, pts 49 and 58) .

For the mark to be qualified as descriptive, it is sufficient that at least one of the potential meanings of the sign is perceived as a characteristic of the goods and services (Trib. UE, 17 Jan. 2017, Netguru v. EUIPO, aff. T-54 / 16, pt 59). This characteristic must respect some rules, such as being objective, inherent in the nature of the product or service, as well as intrinsic and permanent for this product or this service (Trib. UE, May 7, 2019, Vita, aff. T- 423/18, pt 44). However, it does not matter whether this characteristic is essential or ancillary to the products and services. In this case, the two possible meanings of the term "el clasico" can be seen as intrinsic characteristics of the services concerned. For sports-related services, these terms can be understoodre either as services which are traditional, typical or classic "of a sporting event in the sense of habitual insofar as it is repeated periodically", or as "describing an intrinsic characteristic [...] namely their link with a sporting rivalry ”(pts 59 to 61). Indeed, either the repetition of sporting matches between two specific teams in the usual and traditional way is perceived through the terms "el clasico", or it is the sporting rivalry, at the heart of these meetings, which is retained. For the other services mentioned in class 41, which designate services "resulting from modern or recently developed sectors or activities", the terms "el clasico" are interpreted as classical meaning in the sense of "conventional or customary, regardless of the content of the services themselves ”. “For example, [for] electronic publication services or the supply of non-downloadable digital music, […] it cannot be excluded that they present traditional or classical content (for example a digital version of classical music or the publication electronic of a traditional sports magazine) ”(pt 62). In conclusion, the words 'el clasico' are perceived as an intrinsic characteristic of the services in question and are therefore descriptive.

The lack of distinctive character of the terms "el clasico"

Once the sign has been considered descriptive, only a distinctive character acquired through use can allow it to be registered. Indeed, only the exception to the absolute grounds for refusal to register a mark can allow a mark to be registered. For this, several conditions must be fulfilled: the mark must be known to "at least a significant fraction of the relevant public" and the use of this mark must be made as a mark (Trib. UE, 15 Dec. 2005, BIC v. OHIM, case T-262/04, point 61; 29 September 2010, CNH Global v. OHIM, case T-378/07, point 29). In order to estimate the share of consumers targeted by the products and services who are aware of the mark, the judge gives a set of indices made up of "factors such as the market share held by the mark, the intensity, the geographic extent and duration of use of this mark, the extent of investments made by the company to promote it, the proportion of interested circles who identify the product as coming from a given company thanks to the mark as well as the declarations of chambers of commerce and industry or other professional associations ”(CJCE May 4, 1999, Windsurfing Chiemsee, aff. C-108/97 and C-109/97, pts 49 to 51, D. 1999. 168; RTD com. 1999. 1021, obs. M. Luby; ibid. 2000. 89, obs. J.-C. Galloux; RTD eur. 2000. 127, obs. G. Bonet). In this case, the applicant did not provide sufficient evidence to demonstrate that the intended audience was aware of the sign. Indeed, the information given by the latter rather emphasizes the descriptive character of the sign to speak of a "sporting meeting between the football teams Real Madrid CF and FC Barcelona" (pts 91 and 97). Thus, the conditions related to the acquisition of distinctiveness through use are not met and the descriptive registration request cannot be registered.

While the descriptive character of the registered sign is analyzed by the judge, the same is not true of its distinctive character when filing the registration application (point 79). Indeed, the General Court of the European Union focuses only on the descriptive character of the sign, given that it suffices that only one absolute ground for refusal be fulfilled for the application for registration to be unable to be registered as a trade mark. (pt 78). As the descriptive character of the El Clasico registration application has been demonstrated, it is not necessary for the latter to assess its distinctive character. Furthermore, the judge recalls that EUIPO is not bound by the decisions of national authorities concerning questions of assessment of the descriptive and / or distinctive character of an application for registration (CJCE 17 July 2008, L & D v. OHIM, case C-488/06 P, pt 58). Indeed, it is not because a member country of the European Union considered that the mark El Clasico was distinctive, and authorized its registration, that the EUIPO is obliged to follow this reasoning (Trib. EU, 27 Feb. 2002, Streamserve v. OHIM, case T-106/00, point 47). Thus, although the El Clasico mark has been the subject of national registrations, EUIPO refused its registration for the European Union for the services in question.