OHIM vs FIFA
Par Benjamin Martin-Tardivat le jeudi 14 août 2008, 08:46 - EU and Alicante News - Lien permanent

In five decisions which, as of today, had not yet been posted on the OHIM Board
of Appeal web pages, Ferrero oHG mbH has been successful in its applications to
annul the decisions of the Cancellation Division and to have five Community
trade marks owned by the Fédération Internationale de Football Association
(Fifa) declared invalid for descriptiveness and lack of distinctive
character.
The five marks are (i) WORLD CUP 2006, (ii) GERMANY 2006, (iii) WM 2006 (WM
being the German word Weltmeisterschaft, meaning World Cup or Championship),
(iv) WORLD CUP GERMANY and (v) WORLD CUP 2006 GERMANY.
The cases which were not joined are numbered R 1466 to
1470/2005-1.
The grounds upon which the registrations were challenged was that the signs in
question were descriptive and lacked distinctive character. The Cancellation
Division presumably felt confident that this was not so, but the Board of
Appeal, annulling all five of its decisions in rulings of 30-odd pages in
length, thought otherwise.
All IP specialists should congratulate the Board of Appeal for having the
courage (i) to refuse the request to convene a Grand Board to hear these cases,
since they raised no issue of legal difficulty and (ii) to apply Community
trade mark law as it stands, fairly and impartially, in the face of some pretty
vigorous assertions from the Community trade mark proprietor.
Please note the wide range of goods and services for which Fifa sought
protection of their marks. I wasn't expecting to find any of these on the
list:
Class 5 – feminine hygienic products; fungicides, herbicides; deodorants for
non personal use.
Class 8 – electric or non-electric razors, including razor blades; depilatory
devices; tweezers; curling tongs; kitchen scissors.
Class 10 - nursing bottles; condoms.
Class 31 – Foodstuff for animals; fresh berries; fresh vegetables; flowers;
litter for animals.
Class 34 – Matches; lighters; cigarette cases, ashtrays, smoker's articles made
of non-precious metal; cigarettes; tobacco.
The real importance of these decisions lies not in these marks but in the
message that organisers of sports events in the future will be receiving.
If GERMANY 2008 does not meet the criteria for valid registration, will LONDON
2012, for example, fare any better?