EU court backs NBA team against TM opposition
The National Basketball Association ( NBA) today secured a trademark victory, after the EU General Court dismissed an appeal against an earlier decision.
In January 2013, NBA Properties applied to trademark a figurative sign for the New Orleans Pelicans, a professional US basketball team, at the European Union Intellectual Property Office (EUIPO).
The applied-for mark depicts a bird flying with a basketball in its mouth, with the words ‘New Orleans’ underneath the image and the word ‘Pelicans’ above.
The NBA sought to register the figurative sign for items including paper products, clothing and sporting goods.
Also in 2013, Germany-based office equipment manufacturer Pelikan Vertriebsgesellschaft filed a notice of opposition in respect of all the goods for the applied-for mark.
Pelikan’s figurative mark (EU number 30,310,673) is made up of a black and white sign that reads ‘Pelikan’ with a small image of a pelican.
The opposition was based on the grounds that the marks were similar and there would be a likelihood of confusion.
In 2015, the EUIPO’s Opposition Division upheld Pelikan’s opposition.
However, in 2016, the EUIPO’s Fourth Board of Appeal annulled the decision after the NBA appealed.
According to the appeal board, the signs were different and would not create any confusion.
The board ruled that the applied-for mark was dominated by the words ‘New Orleans’ and that the word ‘Pelicans’ played a secondary role in the overall impression of the mark.
In addition, the board said that the only similarity between the marks was the word ‘Pelicans’ and that because this was not the dominant feature of the applied-for mark, the marks were not similar.
The Fourth Board of Appeal, which also said the signs were not phonetically similar, described the bird in the NBA’s mark as an “angry-looking bird”.
Pelikan argued that the board distorted the facts when it described the applied-for mark as being “angry looking”. According to Pelikan, the NBA bird should have been described as a pelican.
However, today, the General Court disagreed with Pelikan and said that the mark didn’t show a “voluminous expandable pouch” associated with pelicans. Because of this, the applied-for mark would evoke images of any bird with a large wingspan and pointed beak, such as a stork.
Pelikan claimed that the relevant public would merely perceive the element ‘New Orleans’ as a descriptive indication of the city and that it is not dominant. The company argued that the image of a pelican and the word ‘Pelicans’ are the distinctive elements of the applied-for mark.
The General Court disagreed with this assessment and said that the board was correct to note that the words ‘New Orleans’ are the dominant elements of the applied-for mark.
As a result, the General Court said that Pelikan’s argument that the relevant public perceives the phrase ‘New Orleans’ as a “purely descriptive geographic indication” of the trademark’s goods and services cannot be upheld.
The General Court added that the word ‘Pelicans’ in the applied for-mark only plays a secondary role due to its smaller size and the “minor positioning” of the word compared to that of the words ‘New Orleans’.
Pelikan’s appeal was dismissed and it was ordered to pay the costs of the appeal.
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