Zuffa LLC v OHIM (CFI; joined cases T-379/05 and T-118/06; 02.04.09)

The CFI annulled two decisions of the BoA on the basis that the BoA failed to give adequate statements of reasons for those decisions.

Zuffa applied to register two word marks, ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP, for a wide variety of goods and services spanning Classes 9, 16, 25, 28 and 41. OHIM rejected both applications under Articles 7(1)(b) and 7(1)(c). The BoA dismissed both appeals. In relation to the ULTIMATE FIGHTING mark, the BoA concluded that the mark denoted a type of combat and was devoid of any distinctive character with respect to all goods and services applied for, including those not related to that type of combat. In relation to the ULTIMATE FIGHTING CHAMPIONSHIP mark, the BoA concluded that the mark would be understood as meaning a competition organised in ultimate fighting and was descriptive of the services in Class 41 relating directly to the organisation of sporting events and devoid of distinctive character in relation to the other goods. The mark would not be perceived as an indicator of origin but as designating a sporting event in generic terms.

The CFI held that, where registration of a mark is sought for various goods and services, the BoA must determine that none of the Article 7(1) grounds for refusal applies in relation to each of the goods and services. The BoA may use general reasoning for a series of goods and services only to the extent that they all have a sufficiently direct and specific link such that they form a homogenous category. The mere fact that the goods and services are in the same class is not sufficient since those classes frequently contain a wide variety of goods and services which do not necessarily have a sufficiently direct and specific link to each other.

The applications in question covered more that 215 goods and 13 kinds of different services such as audio cassettes, cooking books, baby books, bows and arrows, and the provisions of information in the field of sport via computer networks. The differences between the goods and services were such that they could not constitute a homogenous category that would allow the BoA to adopt a general statement of reasons.

In relation to the ULITIMATE FIGHTING mark, the BoA had only distinguished between goods and services directly related to fighting and those which were not. However, the BoA did not specifically identify the goods and services which directly related to fighting and therefore the connection between the goods and services was not apparent from the BoA’s decision. Furthermore, it was apparent that the goods and services displayed such heterogeneity that the statement of reasons was excessively general and abstract.

In relation to the ULTIMATE FIGHTING CHAMPIONSHIP mark, the services in Class 41 did not form a sufficiently homogenous category so as to enable the BoA to give a general statement of reasons. The diversity of the remaining goods and services was even more significant and again the BoA was not justified in only giving a general statement of reasons.