In November 2016, in a dispute involving, on the one hand, the
Union of European Football Associations (UEFA) and, on the other
hand, the French National Institute of Industrial Property (INPI)
and Mr H, the Paris Court of Appeal considered that the
semi-figurative trade mark above right has a distinctive character
to designate services in classes 35 (advertisement), 38
(telecommunication) and 41 (entertainment).
In this case, the UEFA, who is the owner of the above trade mark
(the "Earlier Mark") covering – among others
– services in classes 35, 38 and 41, opposed trade mark
application "2016 france sporting event"
filed by Mr H. for identical services.
The opposition was rejected by the INPI, who considered that the
Earlier Mark lacks distinctive character because the expression
"France 2016" is usual to designate an event happening in
France that year.
The Paris Court of Appeal allowed UEFA's appeal and
cancelled the INPI's decision.
The Court considered that the Earlier Mark has an inherent
distinctive character through the association of the name FRANCE,
the year 2016 (this specific year being marked by a major event for
the football world) and the figurative element (figure 0 being in
the shape of a football).
It also pointed out that the association of a geographical
indication (such as France) and a year (2016) is indeed usual to
designate sports and cultural event organisation services but not
to designate the services covered in classes 35, 38 and 41 (except
for sports and cultural event organisation services).
The Court then considered that "2016 france
sporting event" and the Earlier Mark create a similar
overall impression, especially because they are conceptually
identical (the average consumer will immediately, in both signs,
see a reference to the 2016 European Football Championship).
Consequently, as the covered services were identical, the Court
ruled that there was a risk of confusion for the average consumer
and cancelled the dismissal of the opposition.
Case Paris Court of Appeal – November 4th 2016 –
case 15/25003 – "UEFA c/INPIand
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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