Background of the case.

On February 17, 2017, the National Professional Football League filed an application for the following International Trademark with the EUIPO for Class 41.

Following the analysis of the application, the EUIPO considered that it was to be refused both at first instance and finally by decision of the Board of Appeal in October 2019 on the grounds that the mark was considered to be non-distinctive and descriptive in relation to the services applied. In particular, the Board of Appeal stated that:

  1. The sign EL CLASICO was composed of Spanish words written in standard typography and bold in white on a black background, and therefore no additional element is added.
  2. That the relevant public was both the general public and a more professional public, especially for those services related to the training or organization of technical instruction courses. In any case, given that the meaning of EL CLASICO was already perceptible by the average consumer, no distinction could be made between an average public and a more professional one, since both understand the connotation that the terms EL CLASICO entail.
  3. The fact that only the Spanish public is capable of perceiving the concept of EL CLASICO is sufficient to determine the lack of distinctiveness and descriptiveness of the mark.
  4. The Board further considered that the services in question constituted a general category of services. That is to say, they could all be included in services of education, training, entertainment, sporting activities.
  5. As regards consumer perception, it is indicated that consumers will perceive the sign applied for as terms referring to sports rivalry (as it is known in Spain, the classic refers colloquially to soccer matches that generate a great rivalry between both teams and their supporters).

Therefore, and taking into account the above considerations, the Board of Appeal concludes that the mark cannot be distinctive.

The GC makes the following analysis of the descriptive nature of the signs:

– The fact that the definite article “the” is added to the adjective CLASICO means that we are dealing with a noun EL CLASICO, but that in no case is going to modify the perception of the consumer who is going to understand the meaning of CLÁSICO as such.

– It is further argued that the appellant has not provided evidence indicating that the trademark EL CLASICO has not been used for sporting events.

Consequently, the GC concludes that the sign will be perceived as traditional or characteristic and that it refers to a sport rivalry.

As regards the analysis of the services in line with the signs, the GC concludes that it is clear from the evidence provided that the terms EL CLASICO have been used, over the years, in a common and colloquial way to designate sporting matches between teams of great rivalry. Therefore, the GC states that, with respect to these sports-related services, it is reasonable to think that the relevant public may also perceive that the mark applied for describes an intrinsic characteristic of all these services, namely their relation to a sporting rivalry.

The Court clarifies that it is true that not all the services will refer to the sports sector, but that they could also be descriptive. For example, electronic publishing services or the supply of non-downloadable digital music, but at no time can it be excluded that they have a traditional or classical content.

Therefore, the GC concludes that the mark will therefore be descriptive, since there is an obvious relationship between the terms EL CLÁSICO and the services applied for (either by the typology of services related to sports that generate rivalry between the opposing parties, or by the meaning derived from the adjective “classic”).

As regards distinctiveness, the Court indicates that, having confirmed the absolute ground that the mark is descriptive, it will be sufficient for one of the absolute grounds of the Regulation to apply for the mark to be ineligible for registration.

Finally, and to conclude with the Court’s reasoning, the Court recalls that in order to prove that the mark has acquired distinctive character through use, it must be proved that a significant part of the public is capable of identifying the commercial origin of the mark EL CLASICO. From the documents provided, it can be deduced that the fact of describing, or advertising a soccer match, which is described as “El Clásico”, does not imply the commercialization of the services applied for and that this use has been accompanied by other elements (other trademarks or other figurative elements).

For all the foregoing reasons, the appeal filed by the LIGA PROFESIONAL is dismissed.

Judgment of the General Court (Second Chamber) of 24 February 2021 in case T 809/19