A decision by the European General Court has provided guidance on demonstrating genuine use of an earlier trade mark in opposition proceedings and the importance of filing documents in evidence on time.
Footballing and business behemoth, Futbol Club Barcelona, opposed an application by Kule LLC (USA) (an American fashion company) to register 'KULE' as an EU Trade Mark. Barcelona relied on its earlier Spanish trademark for 'CULE' to oppose the application with Barcelona claiming that fans of the club are historically referred to as 'culés'.
The KULE application was made in the following NICE classifications:
Class 14 (Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments); Class 18 (Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Backpacks; Handbags; Purses; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Wallets; Whips, harness and saddlery); and Class 25 (clothing, footwear and headgear).
Barcelona's CULE trademark designated goods in classes 14, 18 and 25. Barcelona also relied on the non-registered word mark CULE, claiming it is well known in Spain within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.
Opposing an EU Trade Mark application
A party opposing an EU Trade Mark application, if the applicant requests, must provide evidence of genuine use of its earlier mark in the five years preceding its opposition. The evidence must demonstrate that the mark has been put to use in connection with the relevant goods or services or, alternatively, that there is a genuine reason for non-use. Proof of use evidence must consist of indicators of the place, time, nature and extent of the use of the earlier mark.
As set out in the decision (Case T-614/14 - Fútbol Club Barcelona v EUIPO - Kule (KULE), available by clicking here), Barcelona produced the following documents in support of their opposition:
an extract from the Spanish dictionary of the Real Academia Española which defines the term 'culé'; five print-outs from websites dedicated to sports news in Spain making reference to Fútbol Club Barcelona and its supporters or players, nicknamed 'culés'; a print-out from a website making reference to Fútbol Club Barcelona and the 'lotería culé'; a print-out from Wikipedia containing information on Fútbol Club Barcelona and stating that its supporters are nicknamed 'culé[s]'; two other print-outs from websites dedicated to sports news in Spain and making reference to Fútbol Club Barcelona and its supporters or players, nicknamed 'culés'; a print-out of a Google search for the term 'culé' showing five references, two of which refer to an open online dictionary forum and two of which refer to Fútbol Club Barcelona.
Opposition Division and Board of Appeal Decisions
On 1 October 2013, the Opposition Division rejected the opposition and on 29 November 2013, the applicant filed a notice of appeal with EUIPO, against the Opposition Division's decision.
Barcelona's appeal was heard by the Fourth Board of Appeal of EUIPO which in June 2014 dismissed the appeal.
The Board of Appeal held that the documents submitted by the club did not demonstrate use of the earlier trade marks in relation to the goods concerned. It also found that the documents submitted out of time by Barcelona could not be taken into account as evidence of genuine use of the earlier trade marks. Regarding the earlier well-known trade mark, the Board of Appeal found that the club had not, proved the existence, validity and scope of protection of the earlier trade mark which was well known in Spain. It therefore rejected the opposition as unfounded.
General Court Decision
The General Court upheld the EUIPO's decision that documents not filed on time could not be taken into account and the documents did not demonstrate use in relation to the goods concerned. The Court also held that the documents submitted by Barcelona merely showed that CULE is used in relation to Barcelona FC, particularly as a nickname for its supporters – that does not constitute genuine trade mark use of the mark in Spain in respect of the goods concerned. Accordingly Barcelona's opposition was dismissed.
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