Juventus awarded costs after TM opponent withdraws
Italy-based Juventus Football Club (FC) have been awarded £5,660 ($8,000) in a trademark dispute after the opponent withdrew its case too late.
Juventus FC applied to register a trademark made up of a capitalised ‘J’ next to a lower-case ‘j’ (trademark number 3,203,966) in December 2016.
The application was opposed by Belgium-based retailer J&Joy, based on the grounds that the application is similar to its earlier trademark (EU number 011,411,601), a figurative mark consisting of two lower-cased ‘j’s side-by-side. Juventus FC filed a counterstatement denying the opposition claims.
Both parties requested costs in their favour and filed evidence.
After the UK Intellectual Property Office (IPO) informed the parties that a hearing was scheduled to take place on March 22, 2018, J&Joy’s representative told the registry via email that it would like to withdraw the opposition.
Juventus FC’s representative said that they had spent a considerable amount of time drafting and filing a skeleton argument, and the opponent only withdrew upon the offer of exchanging skeleton arguments. The club argued that it is “unjust and unreasonable” for them to be expected to meet the costs of preparing for the hearing under the circumstances.
Juventus FC therefore requested costs totalling £4,560 ($6,500). Juventus FC was given a 14-day period to provide written submissions on the issue of costs.
Mark Bryant, on behalf of the IPO, said: “I find that the lateness of the withdrawal of the opposition led to the applicant [Juventus FC] incurring unnecessary and avoidable costs in respect of its representative’s preparations for the hearing and the request of £4,560 in respect of this appears reasonable.”
Bryant ordered J&Joy to pay Juventus a further £300 ($425) for preparing a counterstatement, and £800 ($1,100) for preparing its own evidence, resulting in a total of £5,660.
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