Click here to view the image.
In November 2016, in a dispute involving, on the one hand, the Union of European Football Associations (UEFA) and, on the other hand, the French National Institute of Industrial Property (INPI) and Mr H, the Paris Court of Appeal considered that the semi-figurative trade mark above right has a distinctive character to designate services in classes 35 (advertisement), 38 (telecommunication) and 41 (entertainment).
In this case, the UEFA, who is the owner of the above trade mark (the “Earlier Mark”) covering – among others – services in classes 35, 38 and 41, opposed trade mark application “2016 france sporting event” filed by Mr H. for identical services.
The opposition was rejected by the INPI, who considered that the Earlier Mark lacks distinctive character because the expression “France 2016” is usual to designate an event happening in France that year.
The Paris Court of Appeal allowed UEFA’s appeal and cancelled the INPI’s decision.
The Court considered that the Earlier Mark has an inherent distinctive character through the association of the name FRANCE, the year 2016 (this specific year being marked by a major event for the football world) and the figurative element (figure 0 being in the shape of a football).
It also pointed out that the association of a geographical indication (such as France) and a year (2016) is indeed usual to designate sports and cultural event organisation services but not to designate the services covered in classes 35, 38 and 41 (except for sports and cultural event organisation services).
The Court then considered that “2016 france sporting event” and the Earlier Mark create a similar overall impression, especially because they are conceptually identical (the average consumer will immediately, in both signs, see a reference to the 2016 European Football Championship).
Consequently, as the covered services were identical, the Court ruled that there was a risk of confusion for the average consumer and cancelled the dismissal of the opposition.
Case Paris Court of Appeal – November 4th 2016 – case 15/25003 – “UEFA c/ INPI and Maxime H”