The EU Intellectual Property Office (EUIPO) recently handed down its view in the opposition matter between West Ham United and German stonemasons Röben Tonbaustoffe, wherein West Ham sought to oppose Röben’s EU trade mark application for ‘WESTHAM’ in class 19 for ‘roofing tiles, not of metal’, ‘bricks’, and ‘brick slips’.
In its opposition, West Ham relied upon three earlier marks, its club crest, the word mark ‘WEST HAM’ & the word mark ‘WEST HAM UNITED’, the first two having been registered in 2015, and relied upon the grounds that Röben’s application would both give rise to a likelihood of confusion on the part of the relevant public and take unfair advantage of West Ham’s reputation.
Ultimately, West Ham’s opposition was scuppered when it was put to proof of its use of the 2015 marks in the EU between the relevant period, being between 2019 and 2024, in relation to goods relating to bricks. Although West Ham’s evidence of use included commemorative bricks from the Boleyn Ground and supporter activity in the EU, the club had failed to demonstrate sufficient evidence of its scale, turnover and commercial reach in the EU. The EUIPO in its decision gave particular note to the need of an all-encompassing analysis of the time, place, extent and nature of the use of the mark in the EU for genuine use to be proven. It was further acknowledged that much of West Ham’s use of its marks in the EU pre-Brexit was in the UK, and that post-Brexit UK use couldn’t be considered. Consequently, the opposition relying upon the 2015 marks failed.
On the ground of there being a likelihood of confusion, the EUIPO found that the goods concerned within Röben’s application and West Ham’s registrations were dissimilar so as to not give rise to a likelihood of confusion on the part of the relevant public. Further, the failure to establish evidence of use also prevented West Ham’s reliance on its reputation from succeeding.
Although the football club is known colloquially throughout the EU, given its stature and somewhat recent bouts in European competitions, this case reaffirms the EUIPO’s need for clear commercial evidence of use in a widespread market and cautions EU trade mark holders to continue their use of their marks in the EU rather than rely on pre-Brexit UK use in enforcement.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
