In Norak we are proud to share this article from our client and friend Juan Botella IP Legal y Asociados regarding one of the most polemic themes in football. Even in the king of sports, the intellectual property is a theme of interest. We hope you enjoy this article.
If you’d like to know more visit https://juanbotella.com/en/ .
“On September 29th, the Opposition Division of the European Union Intellectual Property (“EUIPO”) decided on the Opposition Proceedings that Miguel Ángel Galán (“Miguel Galán”) and Mediaproduccion, S.L.U (“Mediapro”) were facing regarding the registration of the European Union Trade Mark (“EUTM”) no. 18.019.997 “VAR-VIDEO ASSISTANT REFEREE” (figurative mark), given the existence of the earlier EUTM no. 17.668.906 “VAR” and the Spanish National no. 3.697.106 “VAR” (owned by Mediapro).
All the contested signs are intended to protect services from Class 41 of the Nice Classification. Concretely:
“Class 41: Sporting and cultural activities; Sports officiating; Video editing; Services for the showing of video recordings; Videotaping.
Class 41: Videotaping”.
This is a shocking resolution, as instead of indicating that the lack of likelihood of confusion comes from the comparative exam of the signs and the field of application (which are indeed identical), this lack is given due to the fact that the term “VAR” describes the services protected by the signs at stake.
Contrary to what certain sports media are announcing, after this Resolution, the Intellectual Property of the term “VAR” is not exclusive for Miguel Galán, as it will be analysed in the conclusions, given the fact that Mediapro also owns trade mark rights upon the term “VAR”.
The EUIPO Decision comes to reaffirm the Resolution from the Appealing Department of the Spanish Patent and Trade Mark Office (SPTO), that on April 7th decided about an appealing procedure that Miguel Galán and Mediapro were facing regarding the application for registration by Miguel Galán of the Spanish trade mark no. 4.009.964 “VAR-ARBITRO ASISTENTE DE VIDEO”.
In the cited Resolution (that was also initiated by an opposition filed by Mediapro with its previous “VAR” trade marks), the Appealing Department indicated:
“It must be taken into account that the acronym “VAR” refers to to “video assistant referee and therefore, it has a descriptive character regarding the nature of the services that the signs at stake protect. As a result, this term must be made available to all the competitors in this sector and cannot be exclusively claimed by any of them”.
In this sense, EUIPO indicated that:
“The term “VAR” presents a direct link to the relevant services (videotaping), in the sense that it describes the nature of the same, and consequently, its distinctiveness is rather low for those services.
Given the direct relation of the term “VAR” with the services at stake, the relevant public will not consider this element as an indicator of the origin of the services and will take into account different elements of the signs”.
Hence, the signs at stake that peacefully coexist in the market without generating any likelihood of confusion between the relevant public.
Beyond preventing any of the parties from monopolizing the term “VAR”, the cited Resolutions from EUIPO and SPTO provoke a clear consequence in the potential economic results that the license of a trade mark “VAR” will generate.
From this Resolutions onwards, it is established that any of the Football Leagues or Organizations that use the VAR system, do not have to apply for a previous license with Mediapro or Miguel Galán, in order to use the term “VAR” when using or promoting the videotaping and referee support service, as it is a term that describes those services (unless a specific Football League desires to use the graphic elements that the signs at stake protect):
Nevertheless, it must be bear in mind that “VAR” is a videotaping system subject to copyrights and patent rights, that in case of using it by a League, an exploitation license must be signed.
As a curiosity, it must be indicated that “VAR” is a Spanish invention attributed to Antonio Ibáñez de Alba. Although, the ownership of this title was declared by a Judicial Resolution, given that the inventor was hired by the banker Mario Conde at the time of developing it in the year 1995 (although, this patent is expired and is part of the public domain).
However, the controversies do not end here, as a third party is now claiming its inventorship upon the “VAR” system. Mr. Francisco López assures that he invented this system in 1999 and proceeded to register it a Copyright title before the Spanish National Copyright Office. This gentleman is also dealing with judicial procedures regarding the ownership of the VAR system.
In conclusion, once the Intellectual Property of the VAR system gets resolved, any of the Leagues that desire to apply this system to their competitions must count with the preceptive license of the owner. Although, no trade mark license shall be granted.”
Article reposted with the permission from: https://juanbotella.com/en/