On 16 June 2016, the General Court of the European Union
rejected an opposition by Fútbol Club Barcelona to the
wordmark "KULE" (T‑614/14). The opposition was based on
an alleged infringement of the club's Spanish wordmark
"CULE," the term culé being a Spanish
variation of the Catalan word cul and used as a nickname
for supporters of the club. Apparently, this is not the only
negative experience Fútbol Club Barcelona has had with the
General Court in recent years. In 2015, the General Court dismissed
an action brought by the club seeking registration of the outline
of its crest as a Community trademark (T-615/14).
Facts of the Case
On 22 April 2011, US-based fashion company Kule filed an
application for registration of the EU wordmark "KULE"
with the European Union Intellectual Property Office
(EUIPO). The goods for which registration was sought are in
class 14 (jewellery and precious stones), class 18 (wallets, purses
and trunks) and class 25 (clothing, footwear and headgear). On
2 November 2011, Fútbol Club Barcelona filed a notice
of opposition to registration of the wordmark in respect of all
goods concerned. The opposition was based on an alleged
infringement of the Spanish wordmark "CULE," which the
club applied for in 1982 and which was also registered to cover
goods in classes 14, 18 and 25.
On 1 October 2013, the Opposition Division rejected the
opposition. An appeal against the Opposition Division's
decision was dismissed by the EUIPO Board of Appeal on 18 June
2014. The Board of Appeal found that the documents presented by the
Fútbol Club did not demonstrate genuine use of the earlier
trademark in relation to the goods concerned. This decision was now
confirmed by the General Court. Pursuant
to Article 42(2) and (3) of Regulation No. 207/2009/EC, a trademark opposition
shall be rejected if, at the applicant's request, the
opposer is unable to prove genuine use of the earlier mark during
the five years preceding publication of the new mark.
Key Considerations of the General Court
The General Court followed previous Court of Justice of the
European Union (CJEU) decisions that genuine use of a trademark
could be found where the mark is used in accordance with its
essential function, which is to guarantee the identity of the
origin of the goods or services for which it is registered.
Regarding the extent of the use made of the earlier trademark, the
General Court stated that account must be taken to both the
commercial volume of the overall use of the mark and the length of
the period during which that mark was used, including the frequency
of that use.
In the present case, the General Court found that Fútbol
Club Barcelona had not adduced evidence "to show the place,
time, extent or nature of use of the earlier trade marks in
relation to the goods covered." While the General Court
acknowledged that the Spanish term culé was indeed
used as a nickname for the supporters and players of the club, the
use of that term had not been proven in relation to the goods
covered by the "CULE" wordmark.
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