Cancellation proceedings "WM 2006" and "Fußball WM 2006"

25 April 2007

Dr Uwe Lüken

The cancellation proceedings relating to the trade marks "WM 2006" and "Fußball WM 2006" were heavily discussed both in the legal community and by the general public as they related to THE event of the year 2006 for everyone in Germany: The "FIFA World Championships 2006".

FIFA had registered the two marks at issue both as national German marks and as CTMs. "WM" is a common abbreviation of "Weltmeisterschaft" - the German word for "world championships". "Fußball" means "football". The registrations covered a wide range of goods and services in 36 different classes, including many typical merchandising products.

The cancellation proceedings were initiated by the candy bar manufacturer Ferrero as a counter-attack in infringement proceedings that FIFA had launched against Ferrero. According to German law, counterclaims for revocation can only be heard by the German Trademark Office and not by infringement courts.

The German Trademark Office revoked both trademarks completely. On appeal the Federal Patent Court (Bundespatentgericht) reversed the decisions in part. It followed the view of the German Trademark Office that the trademarks were not distinctive with regard to goods and services that were closely related to the football championships and the tournament event (not only "sporting events" in class 41, but for example also media products and goods such as sports shoes). However, with regard to goods and services that had less of a connection the court reversed the decision of the Trademark Office.

On further appeal the Federal Court of Justice (Bundesgerichtshof - FCJ) approved the revocation part of the decision, but questioned the decision to partly uphold the trademarks. This part of the case was referred back to the Federal Patent Court. The trademarks were found to be typical descriptions of sports tournaments and therefore not distinctive. The court was of the opinion that the lack of distinctiveness would even cover goods and services that are not related to sports tournaments. FIFA's two main arguments were rejected. The court did not follow the argument that the test for distinctiveness should be different for so-called event trade marks. And it did not consider it decisive that FIFA was the only association that would be organising football world championships in the year 2006. Secondary meaning was not discussed. The FCJ did examine a survey presented by FIFA, but it did not accept the questionnaire it was based on.

The timing of the cases was remarkable. The FCJ decided on the cases in less than a year in order to issue a decision before the world championships. The unfavourable decision did not have a too great an effect on FIFA as they could still rely on their CTMs: Contrary to the German practice, OHIM rejected Ferrero’s applications for a revocation of the marks (Decisions of the Cancellation Division of 28.10.2005 - 972C 002152817 and 969C 002155521).