El Clasico, or the skirmishes between Real Madrid and FC Barcelona, is more than a match. It is a clash of Catalan independence aspirations with Spanish centralism. It is a symbol of rivalry, an occasion for meetings, a source of (not only sporting) emotions. But not a trademark. This was the conclusion reached by the European Union Intellectual Property Office, with which the General Court of the European Union agreed in its judgment of 24 February 2021. The General Court, like the Office, held that “El Clasico” should not be registered as a trademark because it is descriptive and lacks distinctiveness.
Attempt to register “El Clasico
The Liga Nacional de Fútbol Profesional (La Liga), part of the Spanish soccer association, filed an application for protection with the European Union Intellectual Property Office (EUIPO) in 2018 for a word and figurative mark depicting the white word “El Clásico” on a black background:
La Liga wanted to register the mark for the 41st class in the Nice classification, which includes, among other things, the provision of entertainment services.
On August 9, 2018, the EUIPO examiner rejected the application for registration of the mark. La Liga appealed the decision, but on October 1, 2019, the second EUIPO Board of Appeal dismissed the appeal. The Board held that refusal of registration is justified when the mark is descriptive or lacks distinctive character in one of the official languages of the European Union. In the present case, both conditions were met. Furthermore, the Board of Appeal disagreed with La Liga’s claim that the mark ‘El Clasico’ had acquired distinctiveness through use.
Why was “El Clasico” not registered?
- The mark has no original distinctiveness.
A trademark can be registered if it is distinctive, i.e. it is capable of distinguishing goods in trade. For European marks, this requirement must be met in all member states.
The most common source of lack of distinctiveness is the descriptiveness of a wordmark in one or more EU languages. The EUIPO refuses registration in such cases because, in the part of the EU where the words contained in the sign have a specific meaning concerning the goods or services covered by the application, the public will not perceive the sign as a trademark but as information about the features and characteristics of the product or service.
The EUIPO Board of Appeal found that “El Clasico” lacked distinctiveness for three reasons. First, for Spanish-speaking audiences, the claimed sign will refer to something ordinary and typical (Spanish “clásico” means classic) and not to the services offered by La Liga. Second, “El Clasico” is commonly used to name matches played by Real Madrid and FC Barcelona and is consequently descriptive. Third, the Spanish, French, Germans, Dutch, and Portuguese use the name “El Clasico” to describe the fierce rivalry of any sports team. As a result, the mark does not indicate the commercial origin of the services. The Board of Appeal also emphasized that the use of a standard white font on a black background does not sufficiently distract the public from the descriptive nature of the “El Clasico” word element.
2. A mark does not have secondary distinctiveness
A mark that was originally non-distinctive may become distinctive if a trader makes genuine and consistent use of the sign concerning specific goods or services. Once the relevant public begins to perceive the sign as identifying those goods and services as coming from a particular entity, the mark may be said to have acquired secondary distinctiveness.
In the present case, the Board of Appeal held that La Liga had not shown convincingly enough that, as a result of long-term use, the relevant public perceived the sign ‘El Clasico’ as indicating the commercial origin of the services. For that reason, in the Board’s view, the sign does not have a secondary distinctive character.
Complaint to the EU General Court
La Liga did not accept the arguments of the EUIPO Board of Appeal and filed an appeal with the General Court of the European Union on November 22, 2019, against the decision. In the complaint, La Liga requested that the EU General Court annul the decision and issue a judgment allowing the “El Clasico” mark to be registered in Class 41.
On February 24, 2021, the EU General Court upheld the contested decision and held that the arguments of the EUIPO Board of Appeal set out above were convincing and the conclusions were correct. Thus, the EU General Court confirmed that the sign “El Clasico” cannot be registered as a trademark.
Is it over?
Perhaps La Liga will come to terms with the ruling and stop trying to register “El Clasico” as a trademark. Alternatively, it will decide to register it as a more fanciful graphic. However, if it finds that EUIPO and the EU Court are wrong (which seems to be the case, as the argumentation of the authority is sometimes contradictory – especially when it claims that the trademark has not acquired secondary distinctiveness, and at the same time that it is in common use and has quite unambiguous associations, and the one concerning descriptiveness may raise doubts) it may appeal to the Court of Justice of the European Union and continue its efforts to obtain the right of protection.
Regardless of the further fate of the case, one thing is certain – the matches of the most successful Spanish clubs will continue to provide many (sporting and otherwise) emotions to fans around the world.