Victory in the courts for FC Barcelona

To the triumphs achieved by FC Barcelona on the football field we must add in this case another that has taken place in a different although no less complicated field: that of industrial property.

As if it were a three-half football match, Barça's victory occurred in the last phase of the match, after two unsuccessful attempts against the OEPM.

Indeed, after an opposition presented on behalf of FC Barcelona against the Spanish industrial designs nº 0515626-01, 02 and 04, On October 28, 2013, the OEPM issued a resolution rejecting said opposition. FC Barcelona reacted by presenting an appeal against said resolution before the OEPM Appeals Unit, which was also rejected by a new resolution issued on March 7, 2014.

The Catalan club then filed a jurisdictional appeal against the resolution of the appeal before the Contentious-Administrative Chamber of the Superior Court of Justice of Catalonia. The Court's resolution, dated February 17, 2017, this time was favorable to the interests of FC Barcelona, ​​by revoking the previous resolution with the denial of the contested designs.

The contested industrial designs consisted of covers and calendar sheets with several photographs corresponding to emblematic places in the city of Barcelona, ​​and with the name BAR-CEL-ONA printed in large letters on them. Specifically, the products indicated by the applicant were “stationery, office items, brochures, catalogues, printed products, calendars”, in the Locarno class 32-00.

            D0515626-01 D0515626-02 D0515626-04

Among these images, a photograph of the interior of the FC Barcelona stadium (Camp Nou) stood out, with a stand in which the colors of FC Barcelona alternated (blue and maroon) and where the word “BARÇA” could be distinguished in yellow and large characters.

The registered trademarks on which the Catalan club was based were the one corresponding to the image of the Camp Nou stadium and the words “FC BARCELONA” and “BARÇA”, granted for stationery items and calendars, among other products.

The ruling of the Superior Court of Justice of Catalonia rejects the first reason for the appeal by establishing that the challenged designs meet the requirements of novelty and singularity, as it is a composition with a specific distribution of images that can be considered novel as a whole, and considering that the selection of the images and the composition of the set would provide uniqueness.

However, the ruling does uphold the second reason for the appeal, based on article 13.f) of the 20 / 2003, of legal protection of industrial design (which has its correspondence with Article 25.1(e) of the Regulation (EC) No. 6/2002 of the Council on Community Designs). Said article 13.f) of Spanish law establishes as a reason for denial or cancellation of a Spanish design the fact that “the design incorporates a trademark or other sign previously protected in Spain whose owner has the right, by virtue of said protection, to prohibit the use of the sign in the registered design.”

Although the ruling recognizes that the photograph of the stadium incorporated into the design subject to appeal “It is not the one that appears registered as a trademark, nor is it similar”, the Court highlights “that it is not necessary for the match to be exact with the previous design or mark, but rather a match that represents a risk of confusion among consumers or users is sufficient.” It also indicates that the judgment of the risk of confusion may be more demanding the greater the notoriety of the priority trademark or sign, and that it is also necessary to consider the possibility that the registration could give rise to improper use or impairment of the distinctive character. or the notoriety or renown of the previous signs.

The Court justified its decision with several reasons.:

• The renowned character of FC Barcelona as well as its brands and symbols of identity.
• The fact that the Camp Nou photograph acquires relevance in the overall design as it is located in the central part, relatively free of the BAR-CEL-ONA name.
• The fact that it is not disputed that the photograph was taken from the FC Barcelona website itself, and that the name “BARÇA” (registered trademark) clearly appears in it in a dominant position.

Likewise, the Court highlighted that, if the contested design is in force, the paradox could arise that the owner of the same could question the use by FC Barcelona of his own photograph of the stadium.

However, the Court did not rule on whether the reproduction of the photograph of the stadium (taken from the FC Barcelona website) constituted a cause for cancellation of the registration based on Article 13.g) of the 20 / 2003 (corresponding to Article 25.1(f) of the Regulation (EC) No. 6/2002 of the Council), that is, based on the fact that “the design involves an unauthorized use of a work protected in Spain by an intellectual property right.”

The most notable thing about this sentence is the broad interpretation that the Court makes of article 13.f) of the 20 / 2003 (corresponding to Article 25.1(e) of the Regulation (EC) No. 6/2002 of the Council), establishing that the exact coincidence of the element incorporated in the design with a trademark or other sign previously protected in Spain is not necessary to determine the cancellation of the design, and highlighting the importance of the notoriety of the previous trademark or sign, as an additional factor to take into account when assessing the risk of confusion among consumers or users.

It is also interesting to note that This ruling may be a precedent for other cases of Spanish industrial designs that seek to protect products.s (normally souvenirs, stationery items or ornaments), with emblematic elements or images that may conflict with previous marks or signs.

This article first appeared in WTR Daily,  August 3, 2017.

Author Pedro Saturio