UEFA, the European football body behind EURO 2008 and previous European Football Championships has successfully fought off a challenge to the registration of its EURO 2008 trade mark.
Having secured a Community Trade Registration for the mark in relation to a broad range of goods and services, UEFA faced an application for invalidity by German company, Julius Erdmann Beteiligungsgesellschaft mbh, who claimed that the mark was devoid of distinctive character and descriptive.
The applicants argued that the term “EURO” indicates the European currency, which may be used to pay for goods and services claimed, whilst the numeral “2008” indicates the year 2008. To support these arguments, they submitted internet searches for the term “EURO” revealing the existence of millions of entries referring to this term, together with searches for the numeral “2008”, which also revealed millions of hits.
UEFA countered that whilst the term “EURO” and the numeral “2008”, if taken separately, are devoid of distinctive character, this is not the case when the sign is considered as a whole. They also argued that the mark EURO 2008 is merely suggestive and does not provide any information concerning the inherent features of the claimed goods and services.
UEFA went on to claim that internet searches for “EURO 2008” showed that the sign appeared to be used only in connection with the European Football Championships. They added that these championships have been organised by UEFA every four years since 1960 and attract massive audience levels and media attention throughout the EU, such that the relevant public associate marks consisting of a “EURO+YEAR” combination exclusively with UEFA. They also submitted that the application for invalidity should be rejected on account of the distinctive character acquired by the sign.
The Cancellation Division agreed with UEFA that, when taken as a whole, the mark EURO 2008 is not directly or immediately descriptive of any
characteristic of the goods and services claimed. Furthermore, the applicant had not explicitly stated which feature of these goods and services the mark would actually indicate. The applicants’ internet search results were also dismissed on the grounds that these searches provided no information as to the actual use in commerce of the mark when taken as a whole.
In addition, despite identifying various possible meanings of the term “EURO”, the numeral “2008” and the combination of these elements, the Division found that a mental effort was required by the consumer to interpret the meaning of the mark.
Finally, the Division found that UEFA’s internet searches of the mark as a whole supported the view that the mark was not used in commerce as a generic expression but as a widely recognised indication of a specific commercial origin.
The application for invalidity was therefore rejected on the basis that the mark EURO 2008 was considered prima facie distinctive and not descriptive of the goods and services claimed. The Division did not find it necessary to consider whether the mark had acquired distinctive character through use.
A separate invalidity application against UEFA’s registration is currently pending. Given the broad range of goods and services covered, and the strong commercial incentive for traders to associate their goods and services with sporting events of this size, this is perhaps not surprising. It will be interesting to see whether a more robustly argued application will be more successful. The thinness of the arguments filed in this case certainly appear to have gifted UEFA a rather easy victory.