Lately, there has been an interesting inflation of EM 2008 marks registered in Germany. It offers an insight into a highly interesting legal fight between Ferrero and UEFA.
Ferrero, who has just filed a cancellation action against UEFA's EM 2008 CTM word mark, seems intent on using at least some kind of EM 2008 mark for itself in the run-up to the EURO 2008 in Austria and Switzerland. A quick search on the German trademark register revealed no less than four word/device marks for EURO 2008 and one word mark application, which is still pending (and has been so since 2003). In addition, another Ferrero word mark application for Österreich-Schweiz 2008 , applied for on 25 April 2004, is pending. This application enjoys priority over its English language equivalent, UEFA's international registration designating the EC (reg. no. 000807494) for Austria-Switzerland 2008.
Or ist this just a tactical move to make the German Patent Office (or better still, the Federal Patent Court, or one of the civil courts) declare the mark invalid on absolute grounds, or to obtain an judgment confirming that the EM 2008 portion of the word/device marks lacks distinctiveness? If this turns out to be, then the UEFA may find itself in an uncomfortable position if it tries itself to enforce the mark.
Ferrero would not be the first to file for a mark which it considers unregistrable on absolute grounds to gain certainty hereon. The word mark, at least, looks like a tough case, given the time it has been pending since it was filed on May 14th, 2003. And if the German Patent and Trademark Office continues to refuse to register the mark, odds are the UEFA will have a similarly hard time doing so, or enforcing its CTM in Germany, even if it manages to keep it in force. As long as a cancellation action against the CTM is pending, no decision will be rendered on the merits, and it is difficult to say whether courts will be inclined to grant interim relief on the basis of a mark in respect of which not only a cancellation action is pending, but which was also refused protection in Germany on absolute grounds.
Another interesting legal question: Does a national court, called upon as a Community Trademark Court, have the authority to refuse an injunction in respect of a mark which would not be registrable according to its national laws (in particular if the same mark is known to have been refused registration)? Or is it bound by the registration? Luckily, there is plenty of time to think this question over until the Games begin.
In the meantime, feel free to choose your favourite Ferrero EM 2008 mark.