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OHIM 5 Fifa 0 -- but will there be a replay?

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

If you looked at the Board of Appeal decisions on the OHIM website, as the IPKat did just now, you will have noticed that there are no decisions dated between 19 June and 23 June 2008. This is slightly odd, because the Kat has in his possession a series of five extremely interesting decisions of the Board, all of which are dated 20 June 2008.

Right: Fifa's excellent figurative Community trade mark, which -- unlike the word marks listed below -- was not under threat in these proceedings

The decisions are not joined, though they are clearly similar: they are Cases R 1466/2005-1, R 1467/2005-1, R 1468/2005-1, R 1469/2005-1 and R 1470/2005-1. All are appeals brought by Ferrero oHG mbH against the refusal of the Cancellation Division to cancel marks belonging to the Fédération Internationale de Football Association -- better known as Fifa.

The five marks in dispute are not hugely current any more in terms of their commercial value, since they relate to an event which briefly obsessed a large proportion of sports fans. They are

* WORLD CUP 2006 (referring to the football world cup);
* GERMANY 2006 (the event taking place in Germany);
* WM 2006 (WM = Weltmeisterschaft, "World Cup" or World Championship" in German)
* WORLD CUP GERMANY;
* WORLD CUP 2006 GERMANY.

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.

The IPKat congratulates 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.

Merpel says, what I find interesting is 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.

Both Kats agree that 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?

Full post as published by IPKat on August 13, 2008 (boomark / email).