Fútbol Club Barcelona (FCB) was dealt a blow last week when the General Court of the EU (EGC) ruled against it in a hearing between the famous club and American Fashion Brand Kule, LLC.
A dispute arose in 2011 when Kule attempted to register its name as a European word mark under a number of classes. FCB filed notice of opposition based on its prior word mark, Culé, which had been registered under the same classes in Spain since 1982.
In order to successfully oppose registration of a trademark, an opposer may be compelled to demonstrate genuine use of that mark for the purpose for which it was registered in the five years preceding the action. In this case, to establish this genuine use, FCB submitted a number of documents to the Court; including printouts of Google search results and a printout of a Wikipedia page about the club, which used the term Culé to refer to the fans and players of FC Barcelona. General Court Judge Marc van der Woude refused to accept this as sufficient evidence, especially in the case of the Wikipedia page which was deemed to be unsound evidence given the fact that the pages can be edited anonymously.
Even if the evidence in question were to be accepted as valid, the Judge held that, although he did not contest the fact that the word in question was inextricably linked with the club’s players and supporters, it failed to demonstrate genuine use in relation to the purposes for which it was registered.
In finding for Kule, the Court reiterated its decisions in earlier cases that there is genuine use of a trade mark where it is used for the purpose it was originally registered. Matters to be taken into consideration include the commercial volume of the overall use of the mark, and the length of the period during which the mark was in use, including the frequency of use.
FCB also put forward the argument that the word mark had been used by licence-holders in relation to clothes and accessories but it failed to provide any evidence to this effect.
This is not the first time in recent years that FCB has been on the receiving end of a less than favourable decision from a European court. Last year, its application to register the outline of the club’s crest as a mark was rejected.
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Contributed by Brian McElligott