ULTIMATE FIGHTING fights back before the CFI

European Union
In Zuffa LLC v Office for Harmonization in the Internal Market (OHIM) (Case T-379/05, April 2 2009), the Court of First Instance (CFI) has annulled a decision of the First Board of Appeal of OHIM in which the latter had found that the mark ULTIMATE FIGHTING was devoid of distinctive character. 
Zuffa LLC applied to register the mark ULTIMATE FIGHTING for a wide variety of goods and services in Classes 9, 16, 25, 28 and 41 of the Nice Classification. The OHIM examiner found that the mark was descriptive and devoid of distinctive character and, consequently, was not registrable under Articles 7(1)(b) and (c) and 7(2) of the Community Trademark Regulation (40/94).
The First Board of Appeal of OHIM affirmed, finding that ULTIMATE FIGHTING referred to a fight of particular violence, which generally ends when one of the combatants is no longer able to fight. As such, it referred to a particular kind of combat and was thus devoid of distinctive character with respect to all the goods and services for which registration was sought, including those that were not directly related to this type of combat. With regard to the goods and services directly related to fighting, the board indicated that the target public would not perceive the mark as indicating the origin of those goods and services. With regard to the goods and services not directly related to fighting, the board stated that these would be considered by the target public as being marketed during or in relation to a competition in that type of combat, or as being suitable for the practice of that sport, or as forming part of a merchandising programme. The board based its decision on Article 7(1)(b) only. Zuffa appealed to the CFI.
First, the CFI stated that all OHIM decisions must give the reasons on which they are based pursuant to Article 73 of the regulation (now Article 75), and that the CFI was entitled to raise this issue on its own motion. The CFI noted that the purpose of the public interest underlying Article 7(1)(b) is:
  • not unduly to restrict the availability of a mark for other traders offering similar goods or services; and
  • to guarantee to the consumer or end user the identity of the origin of the goods or services designated by the trademark application by enabling that consumer or end user, without any possibility of confusion, to distinguish those goods or services from those of others.
The goods and/or services covered by a mark are thus material to the determination of whether the mark is devoid of distinctive character. In the present case, the application covered over 225 goods and services in five classes. These goods and services were heterogeneous (eg, pre-recorded audio cassettes, cookery books, bows and arrows, and the provision of information in the field of sports via computer networks).
The CFI stated that the board’s distinction between only two categories of goods and/or services (ie, goods and services which were directly related to fighting, and those which were not) was insufficient to allow the CFI to verify whether the board's decision was well founded. The reasons set out by the board for each of the two categories failed sufficiently to explain the reasoning which it followed with regard to each of the goods and services applied for.
In a parallel case involving the same parties, the CFI also annulled the First Board of Appeal’s decision concerning the mark ULTIMATE FIGHTING CHAMPIONSHIP.
Peter Gustav Olson, MAQS Law Firm, Copenhagen

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