Football frenzy leaves the pitch and enters the legal arena
Europe is definitely caught up in football fever. Not even the European General Court (EGC) was spared. Rendering their decision on the case Cule v Kule, they decided on the link between a football club and its fans, at least when it comes to proving genuine use of a trademark.
Background of the case
KULE LLC is an American designing company owned by Nikki Kule, famous for their striped shirts collection. They protected the word mark “KULE” on 22 April 2011 in front of the European Union Intellectual Property Office (TM no: 009917097). They sought protection for classes 14, 18 and 25, mainly regarding to fashion industry. However, Fútbol Club Barcelona opposed the mark (case 001926917), basing it on their Spanish marks for the word “CULE” (TM nos: 2 716 946, 1 021 594, 1 021 596). Cule is a famous nickname for a FC Barcelona fan. A recognizable term all over Europe, FC Barcelona used this fact as an additional ground for opposition, saying that as a well-known mark, no goods or services could use this name. To prove the use of the trademark they submitted a dictionary entry backing up their claims of the term being used in relation to the football club. Also, they added various internet print-outs. However, the Opposition Division did not find this sufficient evidence, and the opposition was rejected. Next, FC Barcelona filed an appeal to EUIPO´s Board of Appeal (case R2375/2013-4), also with a negative outcome.
Decision of the Court
The case continued on in front of the EGC, which decided on it on 16 June 2016 (case T‑614/14). The Court stated that it had to examine the length and frequency of use of the trademark, as well as the ways it was used and commercialized. However, the Court found it problematic that all the proof of use was actually connected to the fans, and not to the club itself. Therefore, the Board of Appeal did not err in its assessment that the submitted evidence does not prove genuine use.
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