In a previous article we talked about the football player Messi, who was able to keep his registration for the trademark MESSI despite the opposition based on the trademark MASSI. Messi is not the only football player filing trademark applications. Although his active career is now behind him, many will still recall the football player Jürgen Klinsmann. Klinsmann won a case before the European Intellectual Property Office (EUIPO) on appeal. The opposition division ruled in favour of the opposition to Klinsmann’s trademark application, but on appeal this decision was revoked. More details below.
In 2017 Jürgen Klinsmann filed an EU application for the following trademark.
The application concerned goods, including printed goods, clothing, footwear, beer and non-alcoholic beverages, and services such as education, recreation and sports activities.
In 2018 the company Panini Società Per Azioni (opponent) filed for opposition on the basis of the logos below.
The opponent claimed that there was a risk of confusion, and also that the notoriety of prior trademarks was invoked. In March 2020 the opposition division ruled in favour of the opponent on the grounds of ‘risk of confusion’. In addition to similarity of goods it was also stated that the trademarks showed some visual similarity, but that conceptually, i.e. in terms of meaning, they were extremely similar to the point of being identical.
In April 2020 the applicant (Klinsmann) filed an appeal on the grounds that the marks differed both conceptually and concretely. The applicant also stated that their own trademark creates the impression of a seal with a black silhouette and a stylised representation of a football player in a black circle performing an overhead kick, with no visible details (face, clothing, etc.). The trademarks of the opponent feature realistic representations of a person, including details such as face and clothing, performing a sideways kick.
In general two trademarks are said to be similar when they are at least partially similar from a visual, aural or conceptual point of view. In terms of visual similarity, the Board of Appeal found that the applicant’s trademark did not coincide with prior trademarks. There was no aural comparison, as none of the trademarks contained word elements.
In assessing the conceptual similarities, the Board of Appeal argued that a depiction of a football player is a weak trademark for goods related to football and sports in general. This argument extends also to ‘clothing’ insofar as these concern sports clothing, and to class 16 with regard to stickers of football players and football books, almanacs or albums. The opponent’s main products are stickers or cards representing full line-ups of relevant football teams, which can then be collected in an album. On this basis there was no clear conceptual meaning that could be ascribed to the applicant’s trademark. For that reason the Board of Appeal saw no conceptual similarity between the trademarks.
The general appraisal of the risk of confusion should take into account the perception of an average consumer, who is deemed reasonably well-informed and observant. The Board of Appeal found that the average consumer of printed publications, clothing, or beer has no reason to assume that all trademarks featuring football imagery come from a single source, given the wide-spread practice of companies sponsoring football or using football for promotion purposes. The average consumer would therefore not readily notice the conceptual similarity that the Opposition Division had found. Consequently there was no risk of confusion between the trademarks and Klinsmann received his registration after all.
What this decision shows is that it is not possible to conceptually monopolise a visual mark that relates to sports. If there is no clear visual correspondence, it is not possible to take action against another visual mark in relation to that same sport.