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 non-distinctive.
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 Court.
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.
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