On January 15, 2025, the Third Chamber of the General Court delivered a pivotal ruling in the trademark dispute between Kokito I Punt, SL and the Fédération Française de Football (FFF). The case revolves around a trademark application featuring a stylized rooster submitted by Kokito I Punt, SL. The FFF raised objections, claiming the rooster might ruffle some feathers by causing confusion with its earlier trademark.
Trademark Application and Opposition
On May 11, 2021, María Didiam Suarez de Rea, the legal predecessor of Kokito I Punt, applied to register a Class 25 trademark under the Nice Classification, covering clothing, footwear, and headgear. (a category that frequently faces disputes, as it includes apparel, sportswear, and accessories, making it a key area of fashion law). A few months later, on September 18, 2021, the French Football Federation (FFF) filed an official opposition, arguing that the trademarks were too similar and could mislead consumers into believing they were purchasing an official FFF product.
EUIPO Decision and Appeal
In a decision made on March 1, 2023, the EUIPO’s Opposition Division supported the FFF, upholding their claim and validating the objections raised. Unwilling to concede, Kokito I Punt, SL decided to appeal. However, on December 13, 2023, the EUIPO’s Fourth Board of Appeal upheld the initial ruling, pointing out a strong chance that consumers would mistakenly associate the two brands.
Key Legal Considerations
The Court emphasized the necessity of evaluating potential confusion between trademarks, referring to Article 8(1)(b) of Regulation (EU) 2017/1001. According to this regulation, if a new mark looks similar to an existing trademark and could cause confusion, it must be denied registration. This clarity in legal interpretation is vital for businesses doing everything they can to avoid a run-in with the law.
Public Perception and Attention
The Court agreed with the EUIPO that the products appealed to the general public, who typically engage their average attention when making purchases. This observation required a careful examination of the trademarks. After all, a distracted shopper might overlook crucial details and end up with a “fowl” choice.
Trademark Comparison
In comparing the two trademarks, the Court identified that both featured the stylized rooster, which significantly influenced consumer perception. Although there were some visual differences, such as color and design, the overall impression might lead to confusion, like mistaking a chicken for a peacock in a poultry pageant. (See images below for comparison).
Visual and Conceptual Similarities
The Court evaluated the visual and conceptual similarities of the trademarks, concluding that, despite some differences, they produced a similar impression. This resemblance bolstered the claim of potential confusion due to the identical nature of the products and the moderate attention consumers typically exert in their buying decisions.
Final Ruling
In the final ruling, the Court dismissed Kokito I Punt’s appeal, confirming that the FFF’s earlier trademark retained sufficient distinctiveness. The Court ordered Kokito I Punt to bear its own costs along with those incurred by the FFF, effectively showing that sometimes, in trademark battles, you have to pay the piper or in this case, the rooster.
Football and Fashion: A Growing Intersection
This case is not just about football; it is about brand protection in fashion and sportswear. Football clubs and national federations have become global fashion brands, selling jerseys, sneakers, and merchandise that compete directly with streetwear and luxury labels. Sports branding extends far beyond the pitch, and federations like the FFF license their marks to generate revenue in the fashion market. With sportswear collaborations now a staple in luxury fashion, trademark protection in Class 25 has become more crucial than ever.
Conclusion and Implications
This ruling serves as both a warning and a guide for businesses hoping to enter the highly competitive fashion and sportswear markets. It stresses the importance of ensuring that trademarks are not only distinct but also comprehensively reviewed against existing marks to minimize confusion risks. The Court’s decision sets a precedent that might have potential trademark applicants clucking about how they craft their brands, ensuring they don’t find themselves in a proverbial cockfight over branding issues in the future.
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