Fútbol Club Barcelona, commonly known as “Barҫa”, and its fan base have a long history. The term “Barҫa fans” refers to the official online fan community of the club, but the ordinary fans who are not formal members are known as “culers”. This name derives from the Catalan word, “cul” – a crude reference to the backsides of supporters who used to sit crammed in a row over the stand at a small stadium in Barcelona where the club played in the early part of the 20th century!
It appears FC Barcelona saw an opportunity to exploit the public’s adoption of the name “CULE” for supporters of the club, by registering the name as a trade mark in Spain for various merchandise goods. FC Barcelona claims that the name “CULE” is well-known in Spain as a reference to its supporters. It is therefore no surprise that FC Barcelona was concerned about an application by Kule LLC, (a U.S. company) to register “KULE” as an EU trade mark for inter alia jewellery in class 14, leather goods in class 18 and clothing, footwear and headgear in class 25. Kule LLC represents the interests of the well known American fashion designer Nikki Kule who began her career with the launch of a range of luxury children’s clothing in 2001 and has since branched out into a so-called “Preppyluxe” women’s collection.
Kule LLC’s EUTM application was published for opposition purposes on 3 August 2011 and FC Barcelona filed opposition. The club based its opposition on Spanish trade mark registrations for the word mark “CULE” covering identical and very similar goods in all 3 classes. FC Barcelona also claimed non-registered trade mark rights and well-known status in “CULE”.
On the face of it, FC Barcelona’s opposition, based on a highly similar trade mark for identical goods was strong. However, the registered rights on which FC Barcelona based its opposition dated back to 1983-1986. Consequently, Kule LLC was entitled to put FC Barcelona to proof of use of the earlier marks in Spain which it did. FC Barcelona filed evidence in order to demonstrate genuine use of the marks. This evidence comprised an extract from a Spanish dictionary defining the term “culé” and a selection of online print-outs making reference to FC Barcelona and its supporters, nicknamed “culés”.
The Opposition Division rejected the opposition and FC Barcelona filed an appeal. The appeal was dismissed by the Fourth Board of Appeal which found that FC Barcelona had not demonstrated genuine use of the earlier marks in relation to the goods concerned. Use of the term “culé” in connection with supporters of the football club did not constitute genuine use of the mark in relation to the goods in classes 14, 18 and 25 covered by the earlier marks and on which the opposition was based. Secondly, FC Barcelona produced some documents for the first time before the Board during the appeal proceedings. In exercising its discretion as to whether to take these documents into consideration, the Board decided to disregard the documents. Furthermore, FC Barcelona did not prove the existence, validity and scope of protection of the earlier non-registered and well-known marks.
In an appeal to the General Court (Futbol Page 4 Club Barcelona v Kule LLC; T-614/14), FC Barcelona argued that the Board of Appeal erred in refusing to take into account documents produced for the first time before it (the Board) during the appeal proceedings and in the second part of its plea, it argued that the documents produced within the period prescribed by the Opposition Division should not have been considered insufficient.
The General Court found that the Board of Appeal had correctly exercised its discretion by providing a statement of reasons and by taking due account of all the relevant circumstances, in particular the fact that the evidence submitted out of time was not actually relevant to the case, as it did not provide indications concerning the place, time or extent of use of the earlier trade marks in relation to the goods covered by the Spanish registrations.
In determining whether the evidence filed within the prescribed time limit was sufficient, the Court noted that proof of genuine use under the EUTM Regulation does not include token use, it must establish real commercial exploitation of the mark to maintain or create a market share. The Court went on to note “genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned”. In reviewing the evidence filed consisting of online printouts, the Court noted that there was no reference in these documents to the trade mark “CULE” in connection with the goods covered by the trade mark registrations on which the opposition was based. Furthermore, the documents were undated so it could not be determined whether the evidence was from the relevant period.
Under the old Proof of Use rules, an Opponent put to proof of use of its earlier mark(s) had to supply evidence of use during the period of five years immediately preceding the date of publication of the contested EUTM (or, as it used to be known, CTM) application. This rule continues to apply in the case of oppositions such as this one, which were filed prior to the coming into force of the Amending Regulation on 23 March 2016. In the case of oppositions filed after this (March 2016) date, in which an opponent is put to proof of use, evidence of use must be shown for the five year period immediately preceding the date of application or the date of priority of the contested EUTM application.
The General Court concluded that the Opponent in this case had failed to provide evidence showing the place, time, extent and nature of use of the earlier marks in relation to the goods covered by the registrations on which the opposition was based. It was not good enough that FC Barcelona had shown that the Spanish term “culé” was used in relation to the football club as a nickname for its supporters, as such use was not use in relation to the goods covered by the registrations. Consequently, the Court rejected the second part of FC Barcelona’s plea and the action was dismissed.
This General Court decision is a blunt reminder to opponents of EUTM applications who rely on marks that are more than five years old at the date of application or at the date of priority of the contested application, that they must be prepared to adhere to the strict Proof of Use requirements concerning place, time, extent and nature of the use as set out in Rule 22(3) EUTMIR.
Opponents cannot rely on public recognition of their marks in isolation to meet the Proof of Use requirements, they must show that the marks have been used during the relevant period in relation to the goods (or services) for which the marks are registered and on which the opposition is based. Furthermore, they must show that the marks have been used in the EU to such an extent as to create a market share in the goods (or services).
One of the online printouts relied on by the Opponent in these proceedings was a printout from the Wikipedia website. The Court issued a reminder that information contained in Wikipedia articles lacks certainty as Wikipedia is a collective encyclopaedia created online, the content of which may be amended at any time and in some cases by anonymous visitors of the website. Whilst this “Wikipedia” rule may make some sense for a certain, limited number of controversial entries, it makes no sense at all for, and cocks a snook at, the vast majority of perfectly legitimate definitions that are found at this free, and widely available, Wikipedia source. No doubt in a decade or so, the Court will catch up with the rest of us.
The outcome of this case is unfortunate for FC Barcelona given their longstanding rights in the trade mark “CULE”, but they were naïve to believe they could rely on these rights without adhering to the strict Proof of Use requirements. It is surprising that, in the absence of relevant evidence, they took this case as far as the General Court. The CULE mark was registered in Spain in classes 14, 18 and 25 back in the 1980s, presumably to coincide with the launch of a range of merchandise under the name. Perhaps it never took off, or the range was phased out over a period of time. Alternatively, it is possible that FC Barcelona registered the name as a trade mark merely as a means of laying claim to it without exploiting it commercially. Whatever the case, FC Barcelona could not expect to succeed in opposition proceedings based on old, unused marks. Rather predictably, they ended up receiving a legal kick in the “cul”.