The crest contour of FC Barcelona will not be a registered trademark

The EU Court in its decision from December 10, 2015 dismissed the complaint lodged by FC Barcelona appealing the denial of registration its crest contour as a trademark.

In April 2013, FC Barcelona applied to OHIM for registration of the contour of the club’s crest as a community trademark for such categories as articles made of paper, clothes, shoes, sports and cultural activities.

Image: The crest of FC Barcelona (left) and the contour crest the club wanted to register as a trademark (right).

Source: press release available on:

http://curia.europa.eu/jcms/upload/docs/application/pdf/2015-12/cp150144en.pdf

In May 2014, OHIM rejected the club’s application for registration on the grounds the shield shape in question is devoid of any distinctive character. The shield shape – which is the contour of the club’s crest – was considered of not being liable to draw consumers’ attention to the commercial origin of the goods and services covered by the application. In August 2014, FC Barcelona challenged the decision of the First Board of Appeal of OHIM before the EU Court. On December 10, 2015 the EU Court dismissed the complaint entirely.

The shape of the crest and its evolution

While looking at crests of the Primera Division clubs, it is not difficult to notice they differ in shape a little. Sometimes the crest takes the shape of a shield, sometimes wheels, using such elements as crosses or flags.

Otherwise, however, we look at a “blank” contour, and otherwise at the characteristic shape filled with colors, symbols and containing the name of the club. These elements attract the recipient’s attention, making him then match the crest with and the name of the appropriate team.

The crest of FC Barcelona is a shield consisting of three parts. The two parts on top show the cross of St. George (left) and the colors of the region – Catalonia (right) and the bottom – a yellow ball with the club colors in the background. Parts separate the upper from the lower yellow bar with the shortened name of the club (“FCB”) inscribed. The first version of the crest of FC Barcelona existed for 11 years since the founding of the club in 1899. In 1910 the new crest appeared and it is still present, however it has undergone a series of changes over 100 years. What has changed? For example, the number of lines on the Catalonian flag (during the years of gen. Franco in charge) and the abbreviated name of the club (“FCB”, “CFB”, “C. de FB”). What is most important – in 2002, during the last club change to the crest’s, the shape of the contour also slightly changed. What does it mean? If eye-catching color elements and symbols contained in the crest – despite the changes – are much the same for over a century and fixed in the public’s mind, then the contour of the crest in its current form works for only 13 years.

The Harley Davidson case

FC Barcelona in its application referred to the example of the motorcycle producer Harley Davidson, which registered the contour of their crest as a trademark.

Image: Registered trademark – the outline of Harley Davidson’s crest.

Source:
https://oami.europa.eu/copla/image/CJ4JX4FZVCC523YA2TMALSKFLH3YCTM2VEMT2ZLA52Z6J4S5K5QOTGTUCP7EHXPHBS7RPORI7OZCK

The viewer quickly matches the presented crest with the name of the manufacturer of motorcycles. Certainly the colors are important – black shield with a white border –and the shape – a distinctive horizontal “slice” across the shield in the middle. It should be noted the only “simplification” in relation to “full” logo in this case is the lack of the inscription “Harley Davidson Motor Company”.

Comparing the crest of FC Barcelona, its “contour” version lacks not only a shortened team name (“FCB”), but also the bar on which the name is placed. Even the contours of the flags and symbols are not visible in the “contour” version of the crest. The EU court upheld the OHIM, according to which the average consumer can match the contour crest with the club FC Barcelona only if he can compare it with the contours of the crests of other clubs. The contour crest presented in the application does not have any detail that would remain in the consciousness of the viewer.

Can they make it happen?

The discussed crest contour was claimed to be devoid of any distinctive character. The club was trying to prove the contoured crest has become distinctive in relation to the goods and services for which registration was requested by consequence of use. Images of the club’s website and promotional materials, where the contour crest is visible, were entered as evidence. Regardless, the EU Court decided the sign was not distinctive.

Considering the club’s determination, it’s expected that FC Barcelona will continue to use the contour logo on its website and in promotional materials hoping that in a few years they will effectively be able to prove the distinctive nature of the design. It seems the lack of some important details on the contour crest (three elements of the crest, strip with “FCB”) will make harder for the club to prove viewers will match the contour crest with the Catalan team. Although devoted supporters might not agree.

We have two conclusions from the above story. First, showing the contoured crest being used is not enough to prove that the contoured crest has become distinctive by consequence of its use. Important is the perception of the average consumer – and having regard to the classes of goods for which the mark was to be registered – this cannot only be a narrow group of devoted club fans. Secondly, registering the contour crest of the registered trademark as another one is possible, but it requires the contour itself meet the conditions for registration as a trademark and then was actually used in such form.