Barcelona FC Trademark Given Red Card by EU Court

In Case T-615/14, the European Union Court has rejected an attempt by Spanish football giant Barcelona FC to register the outline of its club crest as a European trade mark. This brings to an end the Catalan giants' long-running attempt to refine the distinctiveness of its highly lucrative brand.

Background

Barcelona had tried to register the black-outlined shape of their crest or badge for use on items such as stationery, clothing and sporting activities. It was their idea that doing so would strengthen its brand. They brought the appeal before the General Court of the European Union after their application was initially rejected by the European trade mark body – the Office for Harmonisation in the Internal Market (Trade Marks and Designs) ("OHIM") in May 2014.

OHIM rejected the application for registration on the grounds that "the sign in question was not liable to draw consumers' attention to the commercial origin of the goods and services covered by the application". Unsatisfied with the ruling, Barcelona took action to appeal the decision.

Decision

Barcelona's case was dismissed with the court commenting that, "none of the characteristics of the sign at issue contains any striking feature which is liable to attract the attention of consumers."

The court further added, "In fact, the mark sought will rather tend to be perceived by consumers merely as a shape and will not enable them to distinguish the proprietor's goods or services from those of other undertakings." In other words, the outline will not necessarily be recognisable to consumers.

The court further observed that crests are commonly used in business for purely decorative purposes without fulfilling the function of a trade mark. Consequently, the sign in question does not have the distinctive character required for the purposes of registration. The court did not fail to mention the fact that Barcelona FC had not succeeded in demonstrating that it had acquired distinctive character through its use.

Next Steps?

The club may lodge an appeal, limited to points of law only, with the Court of Justice within two months.

Barcelona's attempts to monopolise the outline of its club crest across the EU illustrates the importance of brand distinction in football today. Clubs are increasingly competing off the pitch in terms of negotiating new sponsorship deals and merchandise partnerships, all in an attempt to push their brand images further and strengthen revenue streams.

According to Forbes football team valuations Barcelona's brand value is worth $437m, placing it third in the world with Manchester United ($446m) in second and Real Madrid ($464) holding the crown for most valuable football club brand.