“El Clásico” cannot serve as an EU trademark in Class 41
The Spanish expression “El Clásico” was conceived to designate the world-famous match between Real Madrid CF vs FC Barcelona that is repeated at least twice annually in Spain’s national football championship organised by Liga Nacional de Fútbol Profesional (LaLiga).
But does “El Clásico” possess distinctiveness to serve and be registered as an EU trademark for education, training, entertainment, cultural and sporting activities in Class 41?
It does not, according to the General Court of the EU (GCEU).
In its judgment of 24 February 2021, Liga Nacional de Fútbol Profesional v EUIPO (El Clasico), T-809/19, EU:T:2021:100, the GCEU upheld the EUIPO’s refusal of the designation EU of International trademark No. 1379292 of LaLiga, based on absolute grounds under Article 7(1)(b) and (c) and Article 7(3) of Regulation (UE) 2017/1001 on the European Union trade mark (EUTMR).
The GCEU concurred with the EUIPO that the trademark was descriptive under Article 7(1)(c) EUTMR because, in particular, the Spanish public might perceive it as descriptive of a way of providing the services applied for that had become conventional or customary, irrespective of the content of the services themselves (§ 56).
The evidence on record showed that “el clásico” had been conceived to describe a match between two teams animated by a historical sporting rivalry that was repeated at least annually in the football championship organised by LaLiga in Spain. It was, therefore, that championship’s most repeated and characteristic match and, thus, its classic match (§ 57).
Regarding sports-related services, the GCEU agreed with the EUIPO that it was reasonable to assume that the Spanish, French, German, Dutch, and Portuguese public might perceive “El Clásico” as describing intrinsic characteristics of the services, namely, that they refer to a notable rivalry between teams or belong to a classical match that is repeated periodically (§ 48, 59 and 61). The record also showed that the expression “el clásico” had become over the years relatively common to designate sporting encounters between teams of great rivalry not only in football, but in other sports like basketball, and also outside Spain, in particular, in France and Germany (§ 58).
Furthermore, the GCEU underlined that “El Clásico” was not exclusive to LaLiga, as it had been used repeatedly to describe the match between Real Madrid CF and FC Barcelona that was also played in football competitions not organised by LaLiga, like UEFA Champions League and Spain’s Copa del Rey, and in Spain’s national basketball league (§ 58).
Moreover, the GCEU held that the fact that the trademark was registered by national trademark offices both in the EU and outside it did not establish that it was not descriptive because the EUIPO is not bound by national decisions and the EUTM system is autonomous (§ 72 and 73).
On the other hand, it was confirmed that, since the trademark was found descriptive, it was automatically non-distinctive under Article 7(1)(b) EUTMR (§ 79).
As a final point, the GCEU also rejected LaLiga’s claim under Artice 7(3) EUTMR by finding that the evidence on record did not show that the trademark had acquired distinctiveness through use before its application date. It considered that LaLiga had not used the expression “el clásico” as a trademark, but rather descriptively. According to the GCEU, the fact that LaLiga described, considered or advertised a football match that is described as “El Clásico” does not imply that LaLiga marketed the services applied for under the trademark “El Clásico” (§ 97).
It follows that “El Clásico” cannot be reserved for a single company, club or sporting entity in the field of education, training, entertainment, cultural and sporting activities in the EU. Not even for the entity that each year organises the match “El Clásico” in Spain. As any descriptive term, it must be available to be freely used by all.
Author: Emil Edissonov
Lawyer at Curell Suñol