Trademark "CHAMPIONS LEAGUE" has distinctive character, UEFA can successfully oppose the registration of the trademark "P.C.L. - POKER CHAMPIONS LEAGUE"

Opposition division OHIM 31 March 2014, OppositionNo B 1 959 561(Marelli v UEFA)

 An Italian applicant, Gianroberto Marelli, tried to register as a community trade mark:

“P.C.L. - POKER CHAMPIONS LEAGUE”

The UEFA owner of the older trademark:

“CHAMPIONS LEAGUE” 

 opposed the registration.

The OHIM partially upheld the opposition  of the UEFA.

Visually,  the  signs  are  similar  to  the  extent  that  they  coincide  in  the  words

‘CHAMPIONS LEAGUE’, which compose the earlier marks in their entirety. On the other  hand,  they  differ  in  ‘P.C.L.  -’  and  the  word  ‘POKER’  present  only  in  the contested mark.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant   territory,   the   pronunciation   of   the   signs   coincides   in   the   syllables

‘CHAMPIONS LEAGUE’ present identically in all signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘P.C.L. POKER’ of

the contested mark which have no counterparts in the earlier signs.

Conceptually, the English-speaking public in the relevant territory will perceive the expression ‘CHAMPIONS LEAGUE’ contained in all signs as an association/competition  of  member/teams  of  a  similar  standard  (probably,  the winners or the best of them). For that public the signs are conceptually similar to that extent.

The term ‘POKER’ contained in the contested sign will be understood, by the vast majority of the relevant public, as a family of card games involving betting and individual  play.  This  concept  is  likely  to  be  understood  throughout  the  relevant territory, as the analogous terms are identical or very similar in most Member States. The letters ‘P.C.L.’ will be perceived as an abbreviation of the words ‘POKER CHAMPIONS LEAGUE’. The marks are not conceptually similar with respect to these elements.

Taking into account the abovementioned visual, aural and (partly) conceptual coincidences, it is considered that the signs under comparison are similar.

Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting  signs  must  be  based  on  the  overall  impression  given  by  the  marks, bearing in mind, in particular, their distinctive and dominant components. The element ‘CHAMPIONS LEAGUE’ contained in all marks will be associated by a part of the relevant public with an association/competition of member/teams of a similar standard (probably, the winners or the best of them). Bearing in mind that the relevant services in Class 41 include entertainment; sporting activities it is considered that this element is inherently weak for these services. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the marks. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. With regard to the remaining goods and services, the distinctiveness of the earlier marks must be seen as normal since they have no meaning with respect to those goods and services.

The element ‘POKER’ contained in the contested mark will be associated, by the vast majority  of  the  consumers,  with  a  family  of  card  games  involving  betting  and individual  play.  Bearing  in  mind  that  the  relevant  services  in  Class 41  include entertainment it is considered that this element is non-distinctive for these services. The part of the relevant public that understands the meaning of that element will not pay as much attention to this non-distinctive element as to the other more distinctive elements of the mark. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Distinctiveness of the earlier mark

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade marks enjoy a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with UEFA (Union of European Football Associations) and the running of  seasonal  football  competitions.  According  to  the  opponent,  the  ‘Champions League’ competition is aired in 23 countries; its viewers in the European continent alone  are  more  than  488 million,  and  the  income  derived  from  the  competition exceeded EUR 1000 million in the year 2010.

Such a claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less   distinctive   character   (see   judgment   of   29/09/1998,   C-39/97,   ‘Canon’, paragraph 18).

The opponent filed, in particular, the following evidence:

- A selection of press articles in English (‘Campaign’, 2011; ‘Daily Mail’, 2010 and 2013; ‘The Telegraph’, 2013; ‘Mirror Football, 2011’; ‘The Guardian’, 2011). The press articles refer to the Champions League Football competitions organised by UEFA and include figures regarding the media coverage reached by these events, in particular the final matches, in terms of profit/revenue, audience, number of tweets, etc. For instance, ‘The Telegraph’ states that a match to be broadcasted in 2013 was expecting a global audience of about 200 million. ‘The Guardian’ states that the final match in 2011 was watched in 220 countries around the world. ‘Campaign’ quantifies the amounts paid by major brands to show their advertisements during the Champions League 2011 final at £13 million.

- A copy of the ‘Major events global and European TV audience comparison’ and the ‘Top 5 European markets’ TV audience analysis of major sport events’, dated 2013. Although the exact figures have been requested to be kept confidential by the opponent, the document features the Champions League in the 2011/12 season as one of the leading sport events with the highest TV audiences in the top European Markets.

Although the evidence submitted is not particularly extensive, it clearly confirms the opponent’s claim as to the popularity and notoriety of the sporting event promoted by UEFA under the denomination ‘Champions League’. The figures reported in press articles allows the Opposition Division to conclude, without reason to doubt, that the earlier marks enjoy a high degree of distinctiveness as result of their long standing and intensive use in the European Union in connection with sporting events/entertainment. A high degree of recognition by the public can be inferred, in particular, from the television viewing figures. Furthermore, although part of the evidence  refers  to  events  dated  after  the  filing  of  the  contested  trade  mark application, there are sufficient references in the press articles to competitions organised under the same circumstances and conditions before that date.

Consequently, having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired a high degree of distinctiveness through their use on the market in relation to sporting events/entertainment, thus overcoming the inherent low distinctiveness set out above for these services.

Relevant public – level of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question. In the present case, the goods and services found to be identical or similar are directed at the public at large, as well as at business customers with specific professional knowledge or expertise.

Global assessment, other arguments and conclusion

As  stated  above,  the  more  distinctive  the  earlier  mark,  the  greater  will  be  the likelihood  of  confusion,  and  therefore  marks  with  a  highly  distinctive  character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgment of 29/09/1998, C-39/97,

‘Canon’, paragraph 18).

In the present case, the distinctiveness of the earlier marks is normal with respect to all the relevant goods and services except for sporting events and entertainment services. With regard to these services, the opponent has demonstrated that the low inherent distinctive character of the earlier marks has been overcome by their intensive and longstanding use. Accordingly, they must be considered to have a high degree of recognition for the aforementioned services in Class 41.

The goods and services are partly identical, partly similar and partly dissimilar.

The marks are similar, visually and phonetically, and for the English-speaking public also conceptually to the extent that they have the words ‘Champions League’ in common. Even assuming that in one or more Member States these word elements would not be understood, this would mean that no conceptual comparison could be made between them. However, as a likelihood of confusion in part of the Community suffices, the conceptual similarity for the English-speaking public is relevant.

Although the common element ‘CHAMPIONS LEAGUE’ is placed in the second part of the contested sign, it covers around half of the whole mark. The word ‘POKER’ contained additionally in the contested mark will be associated with a family of card games. As a meaningful element, it conveys an additional concept which is not present in the earlier marks. However, the Opposition Division considers that the common element ‘CHAMPIONS LEAGUE’ nevertheless retains an independent distinctive role in the overall impression of the mark.

Considering this and taking into account that the distinctiveness of the earlier marks is average or even above average, the Opposition Division considers that the difference in length between the signs is insufficient to safely exclude the existence of likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion – including a likelihood of association - on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opposition of the UEFA was upheld for the following contested goods and services:

Class 25:         Clothing, footwear, headgear, cuffs, inner soles, soles for footwear.

Class 35:         Business management; Business administration; Office functions;

auctioneering services.

Class 38:         Telecommunications.

Class 41:   Education;  Providing  of  training;  Entertainment;  Sporting  and cultural activities; dubbing; providing on-line electronic publications, not downloadable; publication of electronic books and journals on- line; publication of books; publication of texts, other than publicity texts; electronic desktop publishing; layout services, other than for advertising purposes; translation; calligraphy services.

Community trade mark application No 10 439 412 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely the following:

Class 25:   Boot uppers; fittings of metal for shoes and boots; footwear uppers; hat frames [skeletons]; heelpieces for boots and shoes; heelpieces for stockings; heels; non-slipping devices for boots and shoes; ready-made linings [parts of clothing]; shirt yokes; studs for football boots [shoes]; tips for footwear; welts for boots and shoes.

Class 35:         Advertising; Rental of vending machines.

Class 41:         Sign language interpretation; subtitling.