Usain Bolt’s victory pose – Iceland case

USAIN BOLT’S VICTORY POSE 

The world champion and former Olympic athlete, Usain Bolt, is seeking to register as a trade mark a logo of the iconic pose he assumed to celebrate his victories. As stated in the application, the logo consisted of a “silhouette of a man with one arm bent and pointing to the head, and the other arm raised and pointing upward”.

The trade mark application was filed before the United States Patent and Trademarks Office (USPTO), for products and services related to, among others, clothing, sunglasses, jewellery and retail shops for exclusive athletics products, as well as for sports bars and restaurants. 

This is not the first time that Bolt is seeking trade mark protection for his victory pose. In fact, in the EU, the logo was registered as a EUTM in 2011 for goods in class 18 (bags, umbrellas or travelling cases, etc..). 

However, in this occasion, the list of goods and services designated in the application has increased, and this would allow Bolt to expand his businesses to other sectors, by having his logo secured.  

In the sports field, registering names or logos of sportsmen and sportswomen as trade marks is very usual, though the protection of other elements, such as gestures or expressions, involves greater complexity. However, Michael Jordan already did it when he successfully registered his slam dunk silhouette, known as the Jumpman logo or Air Jordan logo. 

ICELAND CASE 

On September the 9^th, the Oral Hearing for cases R1613/2019-G and R 1238/2019-G, Iceland, took place before the EUIPO’s Grand Board of Appeal. 

In April 2002, Iceland Foods Ltd, a British supermarket group, filed before the EUIPO two applications for registering as a European Union Trade Marks (EUTMs): 

-       the figurative mark with word elements “Iceland”, in classes 29, 30 and 35, and

-       the word mark “Iceland” in classes 7, 11, 16, 29, 30, 31, 32 and 35.

The EUTM registration requests were granted in 2014. The same year, the Islandsstofa - the Icelandic Ministry for Foreign Affairs-, challenged those registrations, by filing a request for a declaration of invalidity against the above-mentioned EUTMs “Iceland”, for all the goods and services. 

In 2019 the Cancellation Division of the EUIPO upheld Iceland’s request and declared invalid the EUTMs for all the goods and services, on the basis of article 7.1.c) of the European Union Trade Mark Regulation (EUTMR). The invalidity decision was based on the following grounds: 

-       The native English speakers, as well as the consumers from Malta, Sweden, Denmark, the Netherlands or Finland, could understand the term “Iceland” as the northern country. This means that the products and services commercialised under that mark could be perceived as an indication of the geographical origin. In other words, the relevant consumers could think that the goods and services are produced in Iceland. 

-       In addition to this, most of the goods and services covered by the contested EUTMs coincided with goods produced or exported from Iceland, for example, meat or milk products (class 29) or beers (class 32). 

-       As regards the acquired distinctiveness, although the evidences submitted showed that a relevant proportion of the public in UK and Ireland would identify the products and services with the ones from the EUTMs holder (Iceland Foods), this will not occur in other parts of the relevant territory. For instance, the EUTMs holder could not prove acquired distinctiveness for Malta, Sweden, Denmark, the Netherlands or Finland. 

An appeal was lodged by the British company against the invalidity decision, before the Boards of Appeal of the EUIPO. Given the complexity of the case, the First Board of Appeal decided to refer the case to the Grand Board of Appeal. Iceland Foods requested to the Grand Board to hold oral proceedings under article 96 EUTMR. The other party accepted the request, taking place the public oral hearing on September the 9^th. 

Now the members of the Grand Board will have to issue a decision on this case of utmost importance, as decisions of the Grand Board are rare and bind the practice of all EUIPO bodies. 

We will keep you posted!