Marcel Pemsel su IPkat ci notizia della decisione 14.,11.2023 del 4 board of appeal EUIPO case R 1128/2023-4, .United States Olympic and Paralympic Committee, circa la distintività del marchiio denominativo TEAM USA poer prodotti in classe 14, 18, 21 e 25.
In primo grado la domanda di registrazione è respinta ma è accolta in appello.
<<18 The mark for which protection is sought consists of the expression ‘TEAM USA’. The
examiner held that the entire European Union public would understand this expression as
having the following meaning: a group of players representing the United States of
America in a competitive game or sport, which as such is not contested by the IR holder.
19 The examiner, based on the dictionary definitions of the terms ‘TEAM’ and ‘USA’,
assumed that the expression ‘TEAM USA’ was a banal statement indicating information
about an aspect of the goods in question namely that the goods for which protection is
sought may be either used by a group of USA players during a competition, or be
distributed as promotional products or sold during competitions and/or sporting event>>
Ed ecco il dissenso :
<<22 Indeed, the examiner’s reasoning that since all the goods in question can either be used by
a group of US players during a competition or be distributed and sold during competitions
and/or sporting events, the mark for which protection is sought would be perceived by the
relevant consumer as a non-distinctive indication of an aspect of the goods and not as an
indication of their commercial origin cannot be followed. The Board also fails to
understand why the perception of the sign ‘TEAM USA’ as ‘an indication of the
provenance of a group of players’ prevents it from being able to function as a commercial
badge of origin for the goods concerned.
23 The expression ‘TEAM USA’ does not convey any concrete information evoking the
goods in question, namely jewellery items, backpacks and bags, mugs, glasses and water
bottles, as well as clothing articles. None of the examples given by the examiner can
demonstrate that the expression ‘TEAM USA’ is perceived by the relevant public as a non-
distinctive, frequently used or banal statement for jewellery items in Class 14, mugs,
glasses and empty water bottles in Class 21, backpacks and bags in Class 18 or clothing
articles in Class 25.
24 The expression ‘TEAM USA’ as a whole has the minimum degree of distinctiveness
required under Article 7(1)(b) EUTMR for the goods concerned. The registration of a sign
as a trade mark is not subject to the establishment of a certain level of creativity or artistic
imagination on the part of the IR holder, but to the sole ability of the sign to individualise
the goods of the IR holder in relation to those offered by its competitors (24/03/2021,
T-93/20, Windsor-castle, EU:T:2021:164, § 22). The mark for which protection is sought
allows the relevant consumer to distinguish the goods concerned from those of other
undertakings without conducting any analytical examination and without paying particular
attention.
25 The internet links provided by the examiner insofar as they use the expression ‘TEAM
USA’ as a whole refer to the team of top players representing the USA at particular sports
events. The name of a sports team is not excluded, in principle, from the signs capable of
constituting a European Union trade mark, as it follows from Article 4 EUTMR. In this
particular context, the mark ‘TEAM USA’ is likely to be used for goods that are typical
merchandising and souvenir articles, and therefore to designate that they are manufactured,
marketed or supplied under the control of the IR holder, to which responsibility for their
quality can be attributed. The mere affixing of the mark for which protection is sought on
the goods in question enables those goods to be distinguished from other merchandising
and souvenir articles sold or provided by other undertakings (06/09/2018, C‑488/16 P,
NEUSCHWANSTEIN, EU:C:2018:673, § 65-66; 05/07/2016, T‑167/15,
NEUSCHWANSTEIN, EU:T:2016:391, § 43).
26 Thus, the mere fact that the mark for which protection is sought may represent or coincide
with the name of a sports team, in this case the team of top players representing the USA
at particular sports events, does not preclude, as such, its registration. The need to keep a
certain sign free for competitors is, in principle, not an interest protected under
Article 7(1)(b) EUTMR, but rather of other absolute grounds, such as Articles 7(1)(c), (d)
or (e) EUTMR. As regards names, and this could apply also to the name of a sports team,
the interest not to monopolise a name independently of its distinctive character is not an
interest protected under Article 7(1)(b) EUTMR (16/09/2004, C‑404/02, Nichols,
EU:C:2004:538, § 31).
27 The examiner provided no other reason, nor can the Board see why the mark for which
protection is sought should be considered to be lacking distinctive character for the goods
in question. The sign does not lack distinctive character under Article 7(1)(b) EUTMR>>
La decisione pare tutto sommato condivisibile.
Pemsel non la pensa così: <<In this sense, the sign ‘TEAM USA’ either describes that a team based in the US is responsible for the goods in question or that the goods are meant for people supporting the USA. Both meanings appear to be non-distinctive. The fact that they are rather vague is not decisive (see e.g. T-81/13 at para. 20)>>
Al contrrio il segno non pare evocare alcuna assunzione di responsabilità in capo a chicchessia per i beni nè allusioni ad una qualche oggettiva (e non solo creata dal marketing) idoneità per i tifosi USA