Ferrero vs. UEFA, part II

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.

Ferrero takes on UEFA over EM 2008 mark

Ferrero files cancellation against UEFA's EM 2008 mark

It looks as if Ferrero, a maker of chocolates (i.a. kinder products), has learnt its lesson from the FIFA World Cup in Germany in 2006. As can be seen from OHIM's website, FERRERO has recently (14 August 2007) filed a cancellation action against UEFA's EM 2008 word mark (CTM 004905411), registered for the marketing of the upcoming 2008 European Football Championships to be held in Austria and Switzerland. The mark is registered for a wide variety of goods, from dispensers of kitchen towels to vehicle lubrication. It is meant to secure the EURO 2008's official sponsors the exclusivity they pay for. However, in German speaking countries, EM stands for Europameisterschaft (European Championship). It is used as a generic abbreviation for any European championship from boxing to snooker. So EM 2008 could well be be considered a generic term for a European Football Championship by German (and Austrian) standards.

Ferrero's fight against the attempts by organizers of international sports events to secure extensive protection for their trademarks and logos has something of a tradition. In April 2006, when FIFA's enforcement of its Fußball WM 2006 mark (for Fußball-Weltmeisterschaft, German for Football World Cup) was at its nastiest, it obtained the cancellation of the mark before the German Federal Court of Justice (BGH). In a parallel decision, Ferrero also obtained the reversal of the Federal Patent Court's decision not to cancel the trademark WM 2006 (for Weltmeisterschaft 2006, or World Cup 2006) for most of the goods claimed, in particular for everyday consumer goods (I won't list them in detail here, the list of goods and services fills 10 of the decision's 37 pages...).

Not without a cause: Ferrero has a long tradition of including collectible photos of players of the German Mannschaft with two of its most popular chocolate products (duplo, hanuta) before important tournaments such as World Cups and European Championships, usually featuring the competition's name on it.

A very interesting side aspect of the story is that FERRERO is actually an official sponsor of the UEFA European Football Championships in Austria and Switzerland in 2008. So on the face of it, Ferrero may actually be acting against its own interests in cancelling the mark.

Another cancellation is pending against the UEFA's EURO 2008 mark (CTM 003410529), filed by Julius Erdmann Beteiligungsgesellschaft mbH based in Cologne.

Looking at UEFA's CTM portfolio and pending applications, one may be tempted to think that there are more marks that may face cancellation actions, if and when they are registered. Word marks such as POLAND UKRAINE 2012 (CTM 005760012), CROATIA HUNGARY 2012 (CTM 005759956) or ITALIA 2012 (CTM 005759725) , but also EURO 2012 (CTM 004327854) and EURO 2016 (CTM 005486899) look like invitations to file for cancellation.

As far as Germany is concerned, UEFA has not been lucky with its its EURO 200X mark. In 2004, the Federal Court of Justice turned down UEFA's infringement claim in an action against a manufacturer of balls featuring a EURO 2000 logo, albeit not UEFA's official logo. The decision was based on the grounds that the "EURO 2000" word element in UEFA's word/device mark EURO 2000 lacked distinctiveness. During the proceedings, UEFA had itself admitted that EM 2000 was generally understood to refer to the then ongoing European Football Championships and therefore descriptive. This argument does raise the question why UEFA is now applying for the above word marks, which do not appear to be any more distinctive for the respective editions of the same championship.

Let's hope that the European legal machinery will decide on the cancellation in time. When Ferrero obtained the cancellation of the FIFA mark in April 2006, it was almost too late for most companies to jump on the WM 2006 train, which had long left the station by then.

P.S.: Ferrero seems well prepared to fight this through, see here.