The European General Court (EGC) decided that the sole shape of the crest of the FC Barcelona has no distinctive character neither itself or through use (Judgment dated 10 December 2015; Case No.: T-615/14).
Background of the Case and Subject Matter
On 24 April 2013, Fútbol Club Barcelona (FC Barcelona) filed an application for registration of a Community Trademark (CTM) at the Office for Harmonization in the Internal Market (OHIM). The figurative mark in respect of which registration was sought is the shape of the crest of the FC Barcelona (see below) for – among others – stationery, clothing items and sports activities.
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In May 2014, OHIM rejected the application for registration because the sign is not distinctive. The examiner of OHIM is convinced that the trademark applied for did not contain any specific element which is suitable to be an indication of origin of the goods and services covered by the application for the consumer. Furthermore, the sign does not really differ from other basic shapes which are used in various sectors only for ornamental purposes.
The football club also filed evidence at OHIM which should prove that the shape had acquired distinctive character through use in the European Union (EU). The filed evidence are copies of documents consisting of web pages, documents that concerning the applicant’s participation in social networks, extracts from newspapers and the online encyclopedia “Wikipedia” which contained information about the Football Club itself and football in general, especially its economic importance. OHIM refused this evidence in general because they are not sufficient to prove that the shape had acquired distinctive character.
FC Barcelona brought an action against OHIM’s decision before the EGC.
Decision of the EGC
The EGC dismissed the appeal.
First, the EGC follows OHIM’s arguments and comes to the result that the shape has no distinctive character. In this connection the court observes that crests are commonly used in business for purely decorative purposes without fulfilling the function of a trademark. Consequently, the sign cannot be registered as a trademark, except if it has acquired distinctive character through its use.
Secondly, the EGC is of the opinion that the football club has not succeeded in demonstrating that the sign has acquired distinctive character through its use. The court stated that the filed evidence is too general and therefore did not allow drawing conclusions about the perception of the shape in the EU. Therefore, it cannot be proven that a significant proportion of consumers in the EU connect the mark applied for with the FC Barcelona at the date of filing.
Therefore, the court decided to dismiss the action brought by the football club FC Barcelona.
In the recent and comprehensive decision from the Chancery Division of the High Court of Justice, England and Wales, Justice Arnold ruled that the Metrocab taxi is not infringing the London Taxi Company´s (LTC) three-dimensional United Kingdom Trademark (UKTM) and Community Trademark (CTM). On the contrary, the three-dimensional trademarks were found to be invalid as they both lack necessary distinctive character and consist exclusively of the shape which gives substantial value to the goods. The CTM was also found invalid due to non-use. (Case No: HC-2014-002085, Judgement of 20 January 2016)
LTC´s UKTM No. 2440659 LTC´s CMT No. 951871
Background of the case and subject matter The Claimant, the London Taxi Company, is the successor in title to the manufacturer of the Fairway, TX1, TXII and TX4 models of the London taxi. The Defendants, Frazer-Nash Research Ltd and Ecotive Ltd, are the successors in title to the manufacturer of the Beardmore, Oxford and Metrocab models of the London taxi. The LTC is the registered proprietor of the three-dimensional Community Trademark No. 951871 (CTM) for “motor vehicles, accessories for motor vehicles; parts and fittings for the aforesaid” in Class 12, and the United Kingdom Trademark No. 2440659 (UKTM) for “cars; cars, all being taxis” in Class 12. The representations of the UKTM also forms the subject-matter of LTC´s UK Registered Design No. 2069313, which was not relied upon by LTC in these proceedings. The LTC claimed that the shape of the Metrocab taxi is substantially copied from the shape of the TX4, and that the Defendant intends to deceive the public as to the origin of the new Metrocab taxi by adopting a shape which closely resembles that of the LTC´s models. The Defendants counterclaimed that the trademarks are invalidly registered because they lack distinctive character and add substantial value to the goods. In alternative, the Defendants contended that the CTM should be revoked for non-use. The Decision of the Chancery Division of the Hight Court of Justice In the comprehensive judgement of 299 paragraphs, Justice Arnold dismissed the claims for trademark infringement and passing off brought by LTC and accepted the counterclaims and defenses of the Defendants. In summary, Mr. Arnold came to the conclusion that both of LTC´s trademarks were devoid of inherent distinctive character in relation to goods in Class 12 at the respective dates of application, and that neither of the marks had acquired a distinctive character as a result of use by the date of the counterclaim. In the judge´s view, the disputed trademarks would simply be perceived by the average consumer of taxis as merely a variation of the typical shape of a taxi. Furthermore, regardless of the distinctiveness, the two trademarks were also declared invalid in respect of Class 12 because they exclusively consist of the shape. After a comparison of the shape of the Metrocab and the s[[{"type":"media","fid":"4609","view_mode":"media_large","instance_fields":"override","attributes":{"height":135,"width":240,"class":"media-image size-full wp-image-2607 alignright"}}]]hapes of the LTC´s taxis, for which the trademarks were registered, Mr. Arnold came to the conclusion that there is no likelihood of confusion. Also, the Defendants were not found to take unfair advantage of the LTC´s reputation, as a reputation as such was not found. In addition, it was found that the CTM should be revoked for non-use in respect of goods in Class 12 with effect from 2 May 2014, as the only use of taxis of that mark consisted of sale of second-hand taxis or sales for scrap. Lastly, Justice Arnold concluded that the use of the Metrocab is in accordance with honest practices and that there is no evidence that the shape of the new Metrocab is likely to lead consumers of taxi services to believe that it comes from the same source as LTC´s taxis, as opposed to being a licensed London taxi. There has been no damage and the claim for passing off thus failed. Press here to read the full judgement.
- Promoting INTA and the work of the German TMA Committee;
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- The role and challenges of a paralegal working outside your country at another office and how to use this to enhance your career;
- The challenges and views on running a trademark portfolio in-house;
- What you need to know about preliminary injunction proceedings (PI´s) in trademark cases in Germany.
The fee system at the European Union Intellectual Property Office (EUIPO) will change from the fee system applied by OHIM - the "old" name of the office until 23 March 2016. The system will change from a basic fee that covers up to three classes of goods and services to a ‘pay-per-class' system.
- a new one-fee-per-class system for application and renewal fees;
- an overall decrease in fees payable to the Office;
- the incorporation of the provisions of the CTM Fees Regulation into the basic regulation.
The Community trade mark included protection for three classes, costing €900 for an electronic application and €1 050 for a paper application. The Amending Regulation sees the Office move to a one-class-per-fee system. This means that in practice applicants will pay a lower fee if they only apply for one class, the same fee if they apply for two, and a higher fee if they apply for three or more. Renewal fees are substantially reduced in all instances and set to the same level as application fees, and there are also reductions in opposition, cancellation and appeal fees.
Application fees (e-filing)| CTM (old system) | Fee | EUTM (new system) | Fee |
|---|---|---|---|
| First class | €900 covers up to three classes | First class | €850 |
| Second class | Second class | €50 | |
| Third class | Third class | €150 | |
| Fourth and all subsequent classes | €150 | Fourth and all subsequent classes | €150 |
| CTM (old system) | Fee | EUTM (new system) | Fee |
|---|---|---|---|
| First class | €1 350 covers up to three classes | First class | €850 |
| Second class | Second class | €50 | |
| Third class | Third class | €150 | |
| Fourth and all subsequent classes | €400 | Fourth and all subsequent classes | €150 |
European Union certification marks will be introduced in 21 months' time. These will allow 'a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods and services complying with the certification requirements' (Article 74b EUTMR). The registration cost for an EU certification mark will be the same as for an EU collective mark, i.e. €1 800 (€1 500 e-filing); €50 for a second class; €150 for a third (and all subsequent) classes.
This information has been taken from the office's website: https://oami.europa.eu/ohimportal/en/eu-trade-mark-regulation-fees- Name changes
- Use of class headings
- Anti-counterfeiting provisions
- Fee structure