An EUTM was filed for the word mark Ultimate Fighting
Championship in classes 9 ("pre-recorded audio
cassettes; phonograph records; compact disks..."), 16
("books and printed instructional and teaching manuals in the
field of sports and entertainment..."), 28 ("action
figures and accessories therefor; action skill games...") and
41 ("live stage shows, presentation of live performances,
amusement park and theme park services..."). The Examiner
refused the application on the grounds the mark was descriptive and
The applicant's appeal against the decision was dismissed by
the Second Board of Appeal. The Board found that the mark was
descriptive of all the goods and services at issue and so was
devoid of any distinctive character. It also found that the
applicant had failed to establish that the mark applied for had
acquired distinctive character through its use.
The applicant's grounds of appeal to the General
1. The applicant argued that, by adopting general reasoning in
relation to each class of goods and services, the Board of Appeal
failed to provide an adequate statement of reasons for the
contested decision. It was explained by the General Court that the
Board of Appeal had a duty to set out the reasons for its decisions
to allow interested parties to know the measures taken and to allow
the Courts of the European Union to review the legality of those
decisions. With regards to the Board of Appeal's decision, it
was held that for each of the goods and services in respect of
which registration was sought, the Board's decision that the
mark applied for was descriptive was sufficiently explained despite
the use of general reasoning. The Board's reasoning that the
lack of distinctive character derived from the mark's
descriptiveness was also sufficient to understand.
2. The applicant submitted that the sign Ultimate
Fighting Championship did not designate the characteristic
properties of the goods and services. It argued that it was an
arbitrary name distinct from mixed martial arts, that consumers
would identify the expression "Ultimate Fighting
Championship" as designating the competition
organised by the applicant and that even average consumers were
accustomed to the use of names of sporting competitions, such as
the World Cup and the Masters Golf, as trade marks for goods and
services similar to those covered by the application for
registration. The General Court held that that the Board was
correct in its assertion that, irrespective of the degree of
specialisation and level of attention of the relevant public, the
mark applied for was descriptive in respect of all the goods and
services at issue. It agreed with the Board's view that the
sign Ultimate Fighting Championship was "an
identification of the name of its Mixed Martial Arts
competition" and that the addition of the laudatory term
"ultimate" did not make the expression less descriptive.
The General Court explained that even if the applicant was
justified in its argument that the general public is accustomed to
the use of the names of sporting competitions as trade marks, such
competitions are unquestionably well known which is likely to
render them distinctive.
3. The applicant submitted that the Board of Appeal incorrectly
or, in some cases, completely failed to assess the evidence
submitted to prove that the mark Ultimate Fighting
Championship had acquired distinctive character through
use. The General Court, in its consideration, explained that the
acquisition of distinctive character through use of a mark required
at least a significant proportion of the relevant section of the
public to identify the goods or services concerned as originating
from a particular undertaking because of the mark. When considering
whether a mark had acquired distinctive character, factors such as
market share, the long-standing use of the mark, how geographically
widespread the mark is and the amount invested to promote the mark
are all relevant. The Board had disputed much of this evidence on
the basis that the acronym "UFC" often appeared in association with
the Ultimate Fighting Championship mark. The
General Court found, however, that the relevant specialist public
were likely to know what this referred to. The Court concluded the
renown of the mark applied for had been established, but only in
respect of the specialist public of mixed martial arts fans.
The applicant succeeded, but only in relation to those specific
goods and services which were intended for the specialist public,
such as DVDs showing mixed martial arts
and the "provision of information relating to mixed martial
arts via communication and computer networks". The mark could
therefore be registered for such goods and services.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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