On 16 June 2016, the General Court of the European Union rejected an opposition by Fútbol Club Barcelona to the wordmark “KULE” (T‑614/14). The opposition was based on an alleged infringement of the club’s Spanish wordmark “CULE,” the term culé being a Spanish variation of the Catalan word cul and used as a nickname for supporters of the club. Apparently, this is not the only negative experience Fútbol Club Barcelona has had with the General Court in recent years. In 2015, the General Court dismissed an action brought by the club seeking registration of the outline of its crest as a Community trademark (T-615/14).

Facts of the Case

On 22 April 2011, US-based fashion company Kule filed an application for registration of the EU wordmark “KULE” with the European Union Intellectual Property Office (EUIPO). The goods for which registration was sought are in class 14 (jewellery and precious stones), class 18 (wallets, purses and trunks) and class 25 (clothing, footwear and headgear). On 2 November 2011, Fútbol Club Barcelona filed a notice of opposition to registration of the wordmark in respect of all goods concerned. The opposition was based on an alleged infringement of the Spanish wordmark “CULE,” which the club applied for in 1982 and which was also registered to cover goods in classes 14, 18 and 25.

On 1 October 2013, the Opposition Division rejected the opposition. An appeal against the Opposition Division’s decision was dismissed by the EUIPO Board of Appeal on 18 June 2014. The Board of Appeal found that the documents presented by the Fútbol Club did not demonstrate genuine use of the earlier trademark in relation to the goods concerned. This decision was now confirmed by the General Court. Pursuant to Article 42(2) and (3) of Regulation No. 207/2009/EC, a trademark opposition shall be rejected if, at the applicant’s request, the opposer is unable to prove genuine use of the earlier mark during the five years preceding publication of the new mark.

Key Considerations of the General Court

The General Court followed previous Court of Justice of the European Union (CJEU) decisions that genuine use of a trademark could be found where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered. Regarding the extent of the use made of the earlier trademark, the General Court stated that account must be taken to both the commercial volume of the overall use of the mark and the length of the period during which that mark was used, including the frequency of that use.

In the present case, the General Court found that Fútbol Club Barcelona had not adduced evidence “to show the place, time, extent or nature of use of the earlier trade marks in relation to the goods covered.” While the General Court acknowledged that the Spanish term culé was indeed used as a nickname for the supporters and players of the club, the use of that term had not been proven in relation to the goods covered by the ”CULE” wordmark.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

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