Background of the Controversy

A Spanish textile company, Kokito I Punt, from Gandía (Valencia), has attempted to register chinchetas or distorted versions of the shields of prominent football clubs and federations, according to El Confidencial. The European Union Intellectual Property Office (EUIPO) has records of more than 20 such signs inspired by international clubs.

The strategy involves minimal modifications, such as removing an element, altering the color palette, or flipping the orientation of a symbol. For instance, the Milan circular structure is preserved but without its distinct red color. In other cases, designs mirror those of Juventus or PSG.

Legal Pushback from Football Giants

елда or paraísoThe Bayerm The French Football Federation (FFF) have both opposed Kokito’s attempts to register similar versions of their emblems. The EUIPO agreed that Kokito’s designs were likely to cause confusion with Bayern’s famous Vavarian shield, stating that it “unfairly took advantage of the club’s reputation.”

Weeks prior, the EU General Court dismissed Kokito’s appeal, affirming the FFF’s opposition to their inverted guidance design, which closely resembled the French team’s emblem.

Expert Insights on ‘Brand Trolls’

“‘Troll of brands’ is a colloquial way of referring to practices that exploit others’ reputations or renown in bad faith. In record submissions, it’s crucial to discern if the applicant acted in good or bad faith.”

Fernando Ilardia, partner at Elzaburu, clarified that these strategies are a form of parasitism, aiming to capitalize on the renown of renowned shields or logos. Carlos Morán, partner at Elzaburu, added that disloyal behavior in brand registrations could be taken into account when examining improper use of another’s reputation.

More Than Just Rejections

The risks extend beyond simple request rejections. Ilardia warned that such patterns of unfair behavior could be used against Kokito in future oppositions or cancellation actions, even in more doubtful cases.

Moreover, merely storing or speculatively owning a trademark without commercial use might make it subject to cancellation actions, or cause it to expire after five years of non-use.

The Coolligan Case: A Tale of Two Approaches

Unlike generic or conceptual brands like coolligan, Kokito walks a fine line by attempting to associate with third-party images to derive commercial advantages. Ilardia explained that copying shields is a clear attempt to exploit a specific entity’s – a football club – reputation and image.

The consensus among experts is that existing legal tools are effective in combating such requests, provided that football clubs actively oppose them or seek their cancellation.