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EUIPO - La Liga marked 1

the- legal-dispute-over- the-el-clasico

Legal Insight

May 2021

(republished from Οικονομικό Ταχυδρόμο)

Ioannis Psarakis, Lecturer, LL.M (III), PhD Cand.

The attempt of the European Super League and the financial figures that were released simply reminded us once again of what we already knew: what for a large part of the public is a pleasant pastime, for others it is (primarily) a product that embodies enormous economic value.

La Liga (Liga Nacional de Fútbol Profesional) has therefore logically attempted to protect what is perhaps its most valuable asset (?) by applying for registration of 'El Clasico' as an EU Trademark. The application was filed - as required - before the European Union Intellectual Property Office (EUIPO), but was rejected. 

Subsequently, La Liga appealed (successively) to the EUIPO's Appeals Division and to the General Court of the European Union (CJEU), only to obtain a number of negative decisions.

Let's focus on the latter.

Although in the judgment T - 809/19 of the CJEU (published recently - only at the end of February 2021 - available here in French and in Spanish), more points were crucial for the rejection of La Liga's request, very interesting is the following: the General Court held that even if, in the perception of the interested public in the European Union, the term El Clasico has come to refer directly and without much effort to the football match Real Madrid - Barcelona, the term El Clasico is not necessarily exclusively associated with the organising authority La Liga, which also in this case applied for registration (i.e. in its name). 

This judgment of the General Court is a step in the right direction. It is well known that football matches between the two teams are also organised by other authorities such as UEFA for the UEFA Champions League and the Royal Spanish Football Federation (Real Federación Española de Fútbol - RFEF) for the organisation of the Copa del Rey (full name: Campeonato de España - Copa de Su Majestad el Rey). In other words, even if we were to argue that over the years the term El Clasico has certainly referred to the football match between Real Madrid and Barcelona, that would not be enough. It should still refer to the Real Madrid - Barcelona football match, especially in the context of La Liga. But that is not true. La Liga is merely a provider of this particular 'product'. 

But even the basic statement, namely that the term refers directly to the football match between Real Madrid and Barcelona, is not secure. In El Clasico we also refer to the games of the divisional basketball teams. At the same time, the term has fallen into common usage and we now find it in references to classic derbies of other countries .

Speaking in legal terms, La Liga's claims tended to Article 7(3) of EU Trade Mark Regulation 2017/1001 EU, insofar as it seeks to establish what in trade mark law we call "acquired distinctiveness (or character)".

The series will likely be decided in the third game, that before the Court of Justice of the European Union (CJEU).

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