David Beckham is in the news again. This time it’s all about a new US football venture. A venture that has run into a trade mark problem.
Beckham is heavily involved in the formation of a new Major League Soccer (“MLS”) professional football team that will be based in Miami, Florida. The team’s first home game is scheduled to take place very soon, 14 March 2020. The team will be called Inter Miami (full name Club Internacional de Fútbol Miami), but Inter Miami for short, or will it?
As any football lover knows, there’s a rather famous football club that plays in the Italian Series A league called Inter Milan. This team is often referred to simply as Inter. In 2014, the Italian team applied to register the name Inter as a trade mark in the USA. That application is still pending.
In 2018, Inter Miami filed a US trade mark application for the mark INTER MIAMI (in reality, it’s MLS that is doing all this on behalf of Inter Miami). The club also filed an opposition to Inter Milan’s application – no doubt Inter Miami was concerned that a trade mark registration for Inter Milan might be used to stop its use of the name Inter Miami. Inter Miami’s opposition was based on two grounds. The first ground was that registration of Inter Milan would lead to a likelihood of confusion. The other was the claim that the name Inter Milan is descriptive and therefore not registrable.
Inter Miami has raised a number of points:
- the name Inter is common for football clubs (there are apparently football clubs called Inter in, among others, Brazil, Croatia, Finland and Germany);
- the word “inter” is simply an abbreviation of “internacional” so it’s not distinctive;
- the word is simply descriptive;
- the word is not an indicator of source; and
- the registration will unfairly prevent use or registration of further marks incorporating the word “inter”. This sentence from the opposition document is important: “Because of the widespread use of the term Inter in soccer, the relevant consumers do not associate the term Inter with one soccer team; Inter by itself is not a source indicator in connection with goods and services associated with soccer.”
For reasons that aren’t entirely clear, the two grounds (likelihood of confusion and descriptiveness) were split, and the opposition based on likelihood of confusion has already been determined. The US Registry, in the likelihood of confusion matter, found for Inter Milan, holding that registration of Inter Milan would not lead to confusion. Importantly, the Tribunal held that the mere fact that there are a number of Inter clubs does not mean that Inter Milan has no proprietary rights to the name Inter. This finding will have worried Inter Miami, as it may suggest that Inter Milan will be able to use its registration to stop the use of the name Inter Miami.
What this case does is remind us of certain trade mark basics. In order to be registrable, a trade mark must be distinctive. But what exactly does that mean? In South Africa, the issue of distinctiveness has been considered in many court cases, with a recent example being the case of Pepsico Inc v Atlantic Industries which dealt with the issue of the name Twist in respect of soft drinks.
The Supreme Court of Appeal (“SCA”) made the point that, although coined words are often regarded as the gold standard of trade marks, a name does not in fact need to be coined or made up in order to be registrable. In certain circumstances, an ordinary word can be distinctive. The court said this: “Like a made-up word a common word which is arbitrary when applied to a particular product is the exemplar of a mark inherently capable of distinguishing.”
The SCA went on to make the point that even if the word has a meaning vis a vis the product, it might still be registrable if it is allusive. “If ‘twist’ has any meaning as applied to soft drinks, it is ‘allusive or metaphorical.’”
So, what about the word “inter” in the context of football teams? The word does, of course, mean “among” or “between”, so it does have some possible significance in relation to football teams. Yet there’s no denying that for many people who follow football the word “inter” means one specific team.
David Beckham may still have to go back to the drawing board on this one. Here’s a suggestion David: Real Miami!