Word and figurative trade marks exclusively consisting of sports names (sports name trade marks) in the European Union (EU) and their potential for lacking distinctive character and being descriptive has arguably been the subject of fairly little research. One conceivable reason for this could be that sports names as trade marks largely seem, on the face of it, like a non-issue for a person educated in EU trade mark law. After all, if the products and/or services that a sports name trade mark has been applied for relate to that same sport, or perhaps sports at large, it should be denied protection based on the aforementioned descriptiveness and subsequent lack of distinctive character, and depending on the sport, possibly also due to being a common name. On the other hand, if the sports name trade mark is applied for products and/or services which are not related to sports, the aforementioned problem does not exist, and with other barriers for registration being unmistakably absent, the trade mark should be granted protection.
However, decisions of the European Union Intellectual Property Office (EUIPO/the Office) on the matter indicate that the matter is not as simple. Rather, several sports name trade marks have been approved for products and/or services related to both sports at large, and to the very sport, the mark consists of. Additionally, the EUIPO has rejected sports name trade mark applications for products and/or services that could not reasonably be linked to sports in any way, further basing their objections on descriptiveness and lack of distinctive character.
In light of the aforementioned, the topic was interesting both from an academic and professional perspective, ideal for a dissertation where the more or less arbitrary and contradictory behaviour of the EUIPO and the EU legal landscape surrounding sports name trade marks at large was assessed. In this vein, the dissertation aimed at providing, in a concise and organised manner, information on both approved, rejected and partially rejected sports name trade marks, including relevant legislation and EUIPO and Boards of Appeal decisions, preceded by more general information on trade marks. Further, a more in-depth analysis on the aforementioned legislation and decisions was provided, including the pinpointing of issues in the status quo. The legal dogmatic method was applied in the descriptive parts of the dissertation, while legal doctrine with a combination of hermeneutic, argumentative and empirical disciplines was applied in the analytical parts of the thesis.
This blog post intends to provide a concise summary of the findings of the dissertation.
Literal Interpretation of the Relevant Legislation Does Not Lead to Appropriate Results
The relevant legislation, which EUIPO and Boards of Appeal decisions, and subsequently the dissertation mainly relied on, is (currently) found in Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTMR), namely articles 7(1)(b) and 7(1)(c) of the aforesaid, addressing lack of distinctive character and descriptiveness, respectively.
Effectively, article 7(1)(c) of the EUTMR, on the face of it, would appear to mean that stand-alone sports names, such as “football”, cannot be registered for products or services related to the sport, as these would certainly designate the kind, quality or intended purpose of the products or services. However, there are two considerations which are of special interest as goes for the aforementioned subsection on descriptiveness, namely the word “exclusively” and the fact that trade marks are oftentimes registered for very specific products and/or services. This would seem to indicate that the absolute ground related to descriptiveness does not prevent the registration of marks that consist of sports names registered for products or services that have nothing to do with the sport in question or sports at large. Nonetheless, these marks would without question still need to be distinctive to a sufficient degree in accordance with article 7(1)(b) of the EUTMR, i.e., these cannot consist of common names alone, which at the very least some sports names could be argued to consist of as such. This would seem to indicate that a sports name alone, at least reasonably popular such, could not be registered as a trade mark in the EU, regardless of the products or services it is applied for.
However, the matter is not this clear-cut. First, an important consideration lies in the arbitrariness of the sign when compared to the product/services the sign is registered for. Where is the line drawn? What can be considered arbitrary to a sufficient degree? Second, with a view on EUIPO practice, the current legislation would not seem to necessarily exclude registration of trade marks consisting of sports names that are less widely known, or even sports name trade marks in general, several such having been registered, meaning that those had not been considered descriptive, lacking distinctive character, or common names by the EUIPO. Finally, sports name trade marks with figurative elements add an additional aspect to the analysis on descriptiveness and lack of distinctive character, considering the added distinctiveness the figurative elements bring to the equation. However, once again, one is faced with the question of where the line should be drawn.
These are questions that cannot be answered by a literal interpretation of the relevant legislation, but rather only by analysing EUIPO decisions on the matter.
The EUIPO’s Practice Analysed
In order to get an as comprehensive a picture of the status quo as possible, the dissertation investigated 99 sports names, including every single Olympic sport, and whether trade mark applications consisting of the aforementioned had been submitted to the EUIPO. From the available applications, the 20 most relevant ones were chosen based on differences in the sports, the applied Nice classes and the more specific products/services within these (the sports names discussed include athletics, CrossFit, cricket, football, golf, gymkhana, Les Mills, rugby, Spinning and tennis).
Overlap Between Approved and Rejected Products/Services and Nice Classes Most Likely Leading to Complete Registration, Partial Rejection and Complete Rejection
The results were surprising in many regards, one of which was the clear overlap between approved and rejected products/services. This was the case for products and services in Nice classes 9, 16, 18, 25, 35 and 41 as goes for word marks (discussed Nice classes include 3, 5, 9, 12, 14, 16, 18, 20, 25, 28, 35, 38, 41 and 42), and products in Nice classes 18, 25 and 28 as goes for figurative marks (discussed Nice classes include 3, 9, 14, 16, 18, 24, 25, 28, 31, 35 and 41). However, the overlap did not extend to all particular products/services of the aforementioned Nice classes, nor all of the products/services the discussed trade marks had been applied for in these Nice classes, but rather only a part of these. The full list, including the specific products and services overlapping, can be found on pp. 41-42 of the dissertation.
While the dissertation in no way quantitatively analysed all sports name trade marks in the EU, some general points on the different Nice classes discussed could also be inferred, albeit these should be taken with a grain of salt due to the aforementioned reason.
As for sports name word marks, it would seem that applications of products and services in all of the discussed Nice classes are more likely to succeed, or partially succeed, than they are to be fully rejected, with the exception of services in Nice class 41. Especially applications for products in Nice classes 9, 16, 18 and 28 appear to have a higher likelihood of (at least partial) success, while applications for services in Nice classes 35 appear to be most controversial only having partial rejections.
Figurative sports name marks differ slightly from their word counterparts, in that applications for products in Nice classes 24, 25 and 28 and services in Nice class 41 seem to be the most likely to lead to successful registration. However, Nice class 25 also seems to be rather controversial with four complete registrations, one partial rejection as well as two full rejections in the applications discussed. Additionally, Nice classes 14 and 18 also appear controversial, the former having only a partial rejection and the latter having two complete registrations, a partial rejection and a complete rejection.
Based on the above-discussed, it becomes evident to some degree that the EUIPO and the Boards of Appeal do not have any absolute way of measuring whether or not a sports name trade mark is descriptive of the products and/or services it is applied for, and consequently lack distinctive character, considering the several products and services which have been both rejected and registered for such marks. Rather, it seems that these are assessed on a case by case basis, based on several considerations, discussed below.
First, the conspicuousness of the sport the trade mark consists of cannot be excluded from the analysis. It could be argued that while sports such as football and rugby are, and have for some time been, known to the vast majority of EU citizens as such, sports such as Les Mills, gymkhana and perhaps even CrossFit are not as widely known. This must play a significant role considering the descriptiveness of a mark always relates to the relevant public, as to how could something which is a meaningless term to the majority of the relevant public be considered descriptive and therefore be rejected as a trade mark on this basis? It could not, since the mark would not provide information about “the quantity, quality, characteristics, purpose, kind and/or size of the goods or services” nor would the relationship between the mark and the products and/or services be “sufficiently direct and specific, as well as concrete, direct and understood without further reflection”.
Characteristics of the Sport and the Products/Services Applied for
Unfortunately, the Office does not provide considerations behind their approvals of trade mark applications, instead, only stating reasons for objections. This means that there is no way of being certain of the degree the characteristics of a sport, in combination with specific products and/or services applied for, play in the acceptance of sports name trade marks, leaving room mainly for speculation. However, it does not seem far-fetched to consider that some sports are more descriptive of certain products and/or services than others, resulting in the characteristics of a sport assessed with a view to specific products and/or services being of relevance as goes for the registrability of sports name trade marks.
The Chicken or the Egg – Which Came First?
Another significant factor in whether a sports name trade mark is approved or rejected can be argued to lie in whether the sport or the trade mark was created first. This is not meant in the absolute sense of the term, but rather in close connection with the conspicuousness discussed above. Was the sports name trade mark applied for around the same time the same sport was invented or had the sport been established for a reasonable length of time before the application was submitted? This line of inference stems mainly from the discussed successfully registered trade marks consisting of the sports Les Mills, CrossFit and Spinning, as trade marks and/or companies with these sports names were created more or less concurrently with the invention of the sports they relate to.
The Significance of Added Figurative Elements
The afore-discussed does not, however, necessarily provide sufficient explanation for the acceptance or rejection of all of the trade marks addressed, namely the figurative marks. The dissertation discusses, for example, figurative mark 007278492 “GOLF” which was successfully registered for golf-related products and services, although golf has been an established and widely known sport since arguably hundreds of years ago.
In this vein, the dissertation argued the figurative elements of signs to be of great significance, these being able to alleviate descriptiveness and potentially provide signs with a distinctive character to a sufficient degree. This raised the question of where the definitive line goes – which kind of figurative elements, and what degree of such, suffice to provide a sports name figurative mark with the level of distinctiveness that it is accepted by the Office?
The trade marks discussed in the dissertation indicated that the threshold seemed to be rather low, almost nonexistent, for sports name figurative marks registered for other than sports-related products and/or services, or only impliedly sports-related products and/or services. As goes for sports name figurative marks applied for explicitly sports-related products and/or services on the other hand, the required level of figurativeness seemed to be much higher. However, in some of the analysed trade mark applications the previously discussed conspicuousness of the sports might have played a role.
The Arbitrariness of the EUIPO in Assessing the Registrability of Sports Name Trade Marks
From the decisions of the Office and the Boards of Appeal and the subsequent analysis provided based on these, it becomes clear that there are some general matters the aforementioned take into consideration when assessing the registrability of sports name word or figurative marks, including the conspicuousness of the sport, the characteristics of the sport in combination with the type of products and/or services applied for, the time of invention of the sport and the time of application for the trade mark and finally, the strength of the figurative elements of the mark.
However, while the aforementioned arguments are based on the prominence of these being evident in the decisions of the Office and the Boards of Appeal discussed in the dissertation, all of these points were also contradicted in other decisions, albeit to a lesser degree. This would indicate that as it stands, there is a level of arbitrariness to the Office’s decision-making when it comes to the registrability of sports name trade marks, meaning that while some degree of certainty can be inferred, absolute such cannot.
What Does All This Mean for a Trade Mark Applicant?
Due to the fairly arbitrary and contradictory nature of the decisions of the Office and the Boards of Appeal, no absolute criteria can be ascertained, the adherence of which would always lead to successful registration of sports name trade marks in the EU.
However, certainly the approval of sports name trade marks is not entirely arbitrary and a trade mark applicant can take steps to ensure the registration of its sign. First, it would seem that figurative marks, with strong figurative elements, have the highest potential for successful registration. Second, an applicant should assess how closely tied together, in the minds of the relevant public, the sign as such and the products/services applied for are. Finally, the conspicuousness of the sport and the time of invention of the sport should be considered. The less widely known the sport, and the shorter the time since the invention of the sport, the likelier the successful registration of the sign. In this vein, it would appear that applicants who have invented a new sport, for which they have come up with a new name, do not need to be concerned about the registration of their marks, provided no other barriers for registration are present.