Spanish FC Barcelona´s trademark is granted in Ecuador
After one year of litigation between the Ecuadorian BARCELONA SPORTING CLUB and the Spanish FUTBOL CLUB BARCELONA, the Ecuadorian Institute of Intellectual Property (IEPI) decided to grant the trademark FC BARCEONA & DISEÑO for int. class 25, 28 and 41 to FUTBOL CLUB BARCELONA.
According to IEPI´s Resolution no. 1107048, on December 26, 2012, FUTBOL CLUB BARCELONA registered the trademark FCB FCBARCELONA & DISEÑO for int. class 25, which includes clothing, footwear and headgear.
On March 13, 2013, the BARCELONA SPORTING CLUB filed an opposition alleging to be the owners of the sign BARCELONA for products of int. class 28 and BARCELONA and its variations for products of int. classes 2, 3, 4, 5, 8, 9, 16, 18, 25, 29, 31, 32, 33 and 34 and for services of int. classes 35, 36, 38 and 41. For its part, the applicant denied the arguments of the opponent.
Recently, on June 18, 2014, FUTBOL CLUB BARCELONA filed a document attaching a trademark coexistence agreement signed by FUTBOL CLUB BARCELONA and BARCELONA SPORTING CLUB in Guayaquil on April 10, 2014 and Barcelona on May 22, 2014. Subsequently, on July 10, the withdrawal of the opposition was added to the record.
Finally, the IEPI decided to approve the transnational agreement, accept the withdrawal of the opposition filed by BARCELONA SPORTING CLUB and grant the trademark FC FCBARCEONA & DISEÑO to FUTBOL CLUB BARCELONA to protect products of int. class 25, since it does not involve a consumer rights violation.
After analyzing the proofs, the IEPI concluded that the signs FCB FCBARCELONA of FUTBOL CLUB BARCELONA and BARCELONA of BARCELONA SPORTING CLUB have coexisted pacifically in the market without any claims. Regarding this, the Resolution reads:
“It has been demonstrated that the two confronted signs can pacifically coexist as a result of their simultaneous use in the market for several years and of the fact that consumers have recognized a different origin in each of them. From this point of view, they have complied with their differentiating function without involving a risk of misleading or association”.