EGC: The shape of the crest of the FC Barcelona is not distinctive

The European General Court (EGC) decided that the sole shape of the crest of the FC Barcelona has no distinctive character neither itself or through use (Judgment dated 10 December 2015; Case No.: T-615/14).

Background of the Case and Subject Matter  

On 24 April 2013, Fútbol Club Barcelona (FC Barcelona) filed an application for registration of a Community Trademark (CTM) at the Office for Harmonization in the Internal Market (OHIM). The figurative mark in respect of which registration was sought is the shape of the crest of the FC Barcelona (see below) for – among others – stationery, clothing items and sports activities.

fcb-crest1.png

In May 2014, OHIM rejected the application for registration because the sign is not distinctive. The examiner of OHIM is convinced that the trademark applied for did not contain any specific element which is suitable to be an indication of origin of the goods and services covered by the application for the consumer. Furthermore, the sign does not really differ from other basic shapes which are used in various sectors only for ornamental purposes.

The football club also filed evidence at OHIM which should prove that the shape had acquired distinctive character through use in the European Union (EU). The filed evidence are copies of documents consisting of web pages, documents that concerning the applicant’s participation in social networks, extracts from newspapers and the online encyclopedia “Wikipedia” which contained information about the Football Club itself and football in general, especially its economic importance. OHIM refused this evidence in general because they are not sufficient to prove that the shape had acquired distinctive character.

FC Barcelona brought an action against OHIM’s decision before the EGC.

Decision of the EGC

The EGC dismissed the appeal.

First, the EGC follows OHIM’s arguments and comes to the result that the shape has no distinctive character. In this connection the court observes that crests are commonly used in business for purely decorative purposes without fulfilling the function of a trademark. Consequently, the sign cannot be registered as a trademark, except if it has acquired distinctive character through its use.

Secondly, the EGC is of the opinion that the football club has not succeeded in demonstrating that the sign has acquired distinctive character through its use. The court stated that the filed evidence is too general and therefore did not allow drawing conclusions about the perception of the shape in the EU. Therefore, it cannot be proven that a significant proportion of consumers in the EU connect the mark applied for with the FC Barcelona at the date of filing.

Therefore, the court decided to dismiss the action brought by the football club FC Barcelona.