BACKGROUND TO THE DISPUTE

D&D DREAM CORP (‘DREAM’) launched a digital game called ‘HEAD SOCCER’ in 2012. For its part, LA LIGA NACIONAL DE FUTBOL PRFESIONAL (hereinafter LALIGA), applied on October de 9th of 2017 for registration to the OEPM of the figurative mark “LA LIGA HEAD SOCCER”, for goods in class 9, including “computer game software for use on mobile phones and mobile phones”. Trade mark Nº 3 686 122 was granted in the absence of opposition.

On October 23rd of the same year, DREAM applied for registration of the European trade mark with the word mark “HEAD SOCCER” to the EUIPO. LALIGA opposed to this registration, claiming risk of confusion with its national trade mark.

In this situation, DREAM filed a complaint against LALIGA, requesting the nullity of the Spanish trademark, by virtue of articles 6.2 d), 51.1 b) and 52 of the Ley 17/2001, de 7 de diciembre, de Marcas (hereinafter LM).

In response to this claim, the Commercial Court rejected the plaintiff’s claims, both on relative invalidity causes under articles 6.2 d) and 52, and on absolute invalidity causes under article 51.1 b) LM. This was upheld by the lack of proof of notoriety of the sign “HEAD SOCCER” on the date of LALIGA’s application, as well as by the lack of risk of confusion between the figurative sign “LA LIGA HEAD SOCCER” and the word sign “HEAD SOCCER”.

On the basis of the above decision, DREAM appealed to the Audiencia Provincial de Madrid.

DECISION

In this case, the appeal was upheld, repealing the Commercial Court’s decision. The trade mark was declared invalid.

This conclusion was reached for two reasons. The first one was the assessment of the risk of confusion or association between the signs. This was considered proven due to various motives, such as the fact that they shared an identical word, that they were figuratively almost identical, but, above all, due to the fact that LALIGA opposed to the registration of the EU trade mark “HEAD SOCCER” by DREAM, in June 2019, precisely because of the risk of confusion with its earlier national trade mark “LA LIGA HEAD SOCCER”. The second reason was the bad faith of LALIGA in the registration of its sign, since being an entity dedicated to the world of football, and knowing the field of computer applications, it could not ignore the plaintiff’s sign, being implausible that it would spontaneously decide to use the word “SOCCER”, which is not even used at European level. Therefore, it is considered that LALIGA applied for registration of the earlier mark knowing that DREAM was using the sign to identify its digital game, which could have prevented the subsequent registration of the sign by the plaintiff and, therefore, acting in bad faith in accordance with art. 51.1 b) LM.

The appeal is therefore upheld. The trademark “LA LIGA HEAD SOCCER” owned by LALIGA is declared null, and the OEPM is ordered to cancel the corresponding registration.

SAP de Madrid de 20 de mayo de 2022 (D&D DREAM CORP  v. LA LIGA NACIONAL DEL FUTBOL PROFESIONAL)