The ongoing trade mark battle over the mark,‘EL CLASICO’, between La Liga and football clubs Barcelona and Real Madrid is testament to the importance of securing your branding and trade names as soon as possible. Football matches between Barcelona and Real Madrid have long been referred to as ‘El Clasico’. However, Liga Nacional de Fútbol Profesional or La Liga as it is commonly known, the governing body for the Spanish football league, stole a march on the two clubs and was able to secure Spanish trade marks on the phrase ‘EL CLASICO’ and figurative representations of the same phrase. A trademark for the figurative representation of ‘EL CLASICO’ with the La Liga logo was also granted by the EU Intellectual Property Office.

La Liga applied for the ‘EL CLASICO’ word mark in Spain in 2017 and was subsequently granted the registration in 2019. Prior to this La Liga also applied for trade mark protection over a figurative representation of ‘EL CLASICO’ accompanied by the football league’s logo in 2014. This application was subjected to two oppositions from entities other than Barcelona and Real Madrid, but the mark was ultimately registered in 2020.

Notwithstanding the grant of these trademarks to La Liga at both the Spanish and EU levels, Barcelona and Real Madrid teamed up in a rare show of solitude to jointly file a domestic trade mark application for the same phrase ‘EL CLASICO’. However, it has been reported that the Spanish Patent and Trade Mark Office denied the application because it would cause confusion with the existing La Liga trade marks using the same phrase. Similarly, the application at the EU Intellectual Property Office for the same mark was opposed by La Liga. Consequently, Barcelona and Real Madrid’s continued use of ‘EL CLASICO’ to promote their derby matches among other things will run the risk of trade mark infringement.

The decision of the Spanish Patent and Trade Mark Office may not be the end of this trade mark battle as the decision will likely be appealed, but the lesson to be learned is that a proactive approach to registering trade marks is required if one is to ensure that they remain in control of the branding and marketing elements that they use. Trade mark registration is not as simple as a first to file system because of the existence of the absolute and relative grounds for refusal, which account for prior use and the distinctiveness of the mark among other things. Therefore, it is imperative that you develop and maintain your marks and apply for registration in a timely fashion. Otherwise, a rival third party may tackle you from your blindside.

Whether you are giants of the football world like Barcelona and Real Madrid or a micro enterprise, Clover® can help you get your branding trade marked. Clover® has secured trade marks for a number of clients in a multitude of industries including the carnival, events, food and beverage, arts, retail and sports industries. Contact us today to protect your trademarks.

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