Unincorporated Sport Associations Can Seek Trade Mark Protection for the Names of Non-professional Football Clubs
| DOI | 10.1093/jiplp/jpu021 |
| Date | 14 March 2014 |
| Pages | 359-360 |
| Year | 2014 |
| Published By | Oxford University Press |
software for the logistic system would at least require instal-
lation on specialised software and training of the staff using
the new system. Before deciding on the purchase of this
type of software, it is therefore highly plausible that an
elaborate selection process would take place, which may
include visiting the producer’s website, studying the
written presentation of the software, having meetings with
the producer’s employees and using a trial version of the
product. The argument that initially the software trade
mark would be referred to orally, as OHIM had put
forward, could not alter the conclusion of the court that
visual perception of the mark before purchase of the
product was inevitable. Consequently, in consideration of
the particularly high degree of attention of the relevant
public, the scale tipped to no likelihood of confusion and
the opposition was annulled.
Practical significance
The judgment of the GC illustrates the complexity of the
assessment of likelihood of confusion. Many factors are
of importance, each carrying a different weight in different
circumstances. The judgment reaffirms the casuistic char-
acter of the assessment, as all possible conditions in practice
should be taken into consideration. Apparently the degree
of attention of the relevant public can be divided into sub-
levels; in any case into a relatively and a particularly high
attention. Further, the manner of marketing and the pur-
chasing process should be investigated conscientiously, as
the (absence of) visual or phonetic perception influences
the outcome of the assessment.
Apart from the legal significance this judgment also illus-
trates how a trade mark opposition procedure can linger for
years; more than tenyears have already passed since Greben-
shikova filed the application.For trade mark conflicts this is
not an unusual time span, but, as appropriately observed in
the IPKat article ‘When Volvo met Solvo: a lesson in EU
trade mark law’ (ipkitten.blogspot.co.uk/2013/12/when-volvo-
met-solvo-lesson-in-eu-trade.html), ten years is quite some
time when compared to the life of for instance a patent or
an unregistered Community design. Additionally, the results
of the various instances can differ significantly, sending the
parties from pillar to post. The present judgment for exam-
ple has the same outcome as the initial two instances, yet
on different grounds. However, this GC judgment might
not be Volvo’s final destination; Volvocould tr y its last luck
at the Court of Justice of the European Union, with pos-
sibly yet another conclusion.
Esther B. Schnepper
Institute for Information Law (IViR), University of Amster-
dam
Email: esther.schnepper@student.uva.nl
doi:10.1093/jiplp/jpu036
Advance Access Publication 25 March 2014
BUnincorporated sport associations can
seek trade mark protection for the names
of non-professional football clubs
Associazione Sportiva Entella Chiavari 1914 v Virtus Entella,
Court of First Instance of Genoa, Sezione specializzata in
materia di Imprese, Order of 21 October 2013
In an interim decision an Italian court ruled that
an unincorporated sport association is allowed to seek
trade mark protection for the name and crest of a non-
professional football team, provided that the place name
included in the claimed marks is not a mere geographical
indication.
Legal context
By Article 19 of the Italian Intellectual Property Code, any
person can obtain the registration of a trade mark that he
uses or intends to use for the supplying of goods and ser-
vices of his enterprise. It is commonly believed that Article
19 allows a person, who does not have the qualification of
enterprise according to the definition in Article 2082 of the
Italian Civil Code, to register a trade mark. It is, however,
not settled whether a person who carries out an economic
activity falling outside the concept of enterprise in Article
2082 can invoke trade mark protection for the signs he uses
for this activity.
Facts
Entella, an Italian football club founded in 1914, played
mainly in semi-professional leagues until 2002 when its
then owner, Associazione Calcio Entella Chiavari Srl (AC
Entella), became insolvent and went into administration.
The club soon became active again and registered with the
Italian Football Association (FIGC). Renamed Associazione
Calcio Dilettantisca Entella, the team now plays third tier
league. The current owner of the team is a private
company, Virtus Entella Srl (Virtus Entella), which recently
filed a trade mark application for the word ENTELLA and
the white and blue crest of the team.
The applicant, Associazione Sportiva Entella Chiavari
1914 (AS Entella), was an unincorporated sport association
registered with the FIGC since 1977. In 2003, it changed its
name from AS Entella to AC Entella to which it added the
year ‘1914’. From then on, it used the name Entella for its
football team, now playing in the lowest tier of the amateur
league. In 2013, to celebrate the 100th anniversary of the
foundation of the Entella football team, Virtus Entella
organized many events and activities, including the sale of
new kits with the name of former Entella players and cele-
bratory shirts with the names of all the managers of the
club.
Believing it enjoyed a trade mark right on the name
of the Entella football club and that the activities of
Virtus Entella me ntioned above amo unted to an un-
Journal of Intellectual Property Law & Practice, 2014, Vol. 9, No. 5 CURRENT INTELLIGENCE 359
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