EUIPO and FFF victorious in dispute over rooster figurative trademarks

In January 2025, the French Football Federation (FFF) successfully opposed an EU trademark depicting a highly stylised rooster similar to its distinctive logo. Florence Chapin examines the EUIPO rooster trademark opposition decision, the EU General Court's ruling and the implications for holders of figurative marks. 

On 15 January 2025, the General Court delivered its decision in Case T-104/24, which involved Spanish company Kokito I Punt SL (applicant), the EUIPO (defendant) and the French Football Federation (FFF) as the intervening party. The case concerned an application for registration of a figurative trademark representing a rooster, led by Kokito and contested by the FFF.  

Background to the rooster trademark dispute 

Kokito applied to register the figurative representation of a rooster, shown right, as an EU trademark (EUTM).

Believing the trademark infringed its prior rights, FFF successfully launched an opposition at the EUIPO based on its existing EUTM, as shown left.

On 13 December 2023, the EUIPO's Fourth Board of Appeal confirmed the opposition decision in favour of the FFF, therefore refusing the registration of the contested rooster trademark.

Arguments of the applicant before the Court  

Kokito challenged the EUIPO rooster trademark decision before the EU General Court, alleging a violation of Article 8(1)(b) of EUTM Regulation 2017/1001. The applicant argued that the Board of Appeal had made errors when comparing the signs and its overall assessment of the likelihood of confusion.  

Regarding the comparison of the signs, the applicant criticised the Board of Appeal for considering that the rooster design in the earlier EUTM was predominant compared to the other elements making up the mark, particularly the verbal element ‘FFF’, which, according to the applicant, was equally distinctive. Moreover, the applicant contended that the signs were visually different.  

The Board of Appeal had carried out the following comparison:  

• The contested trademark consisted of a single figurative element; namely, a stylised rooster facing left, depicted in black, white and shades of grey.  
• The earlier FFF rooster trademark was a complex mark comprising both verbal and figurative elements. Like the contested mark, it included a figurative element featuring a stylised rooster, depicted in white and red, facing right.  
• Additionally, the earlier mark included a verbal element consisting of the three letters ‘FFF’, placed below the figurative element, represented in gold and a standard upper-case font. These elements were set against a blue hexagonal background with a golden outline.  

The Board found that the figurative elements representing a stylised rooster in the conflicting marks and the verbal element of the earlier trademark consisting of the three letters ‘FFF’ all possessed distinctive character, as they bore no relation to the goods designated by these trademarks. However, it determined that, due to the size and position of these elements, the figurative element representing a stylised rooster was the dominant element in the earlier trademark, while the verbal element was merely secondary. Further, it concluded that the impact of the blue background, its golden outline and the presentation of the letters ‘FFF’ in golden colour was purely decorative.  

General Court decision on the FFF rooster trademark 

The applicant challenged the Board of Appeal’s position, arguing that the verbal element ‘FFF’ was just as dominant as the rooster design. However, the General Court confirmed that the figurative element representing a stylised rooster was more striking than the verbal element ‘FFF’. Consequently, the applicant was not justified in claiming that the verbal element was the dominant element of the earlier trademark.  

The Court examined the arguments of both parties, focusing on the criteria for assessing the likelihood of confusion, including the visual, phonetic and conceptual similarity of the conflicting signs. The applicant disputed the Board of Appeal’s assessments, claiming the signs were visually different. The applicant also criticised the Board for not assessing the signs as a whole and failing to consider the visual differences between them. The EUIPO and the FFF refuted the applicant’s arguments. While the EUIPO appeared to argue that the visual similarity between the signs was “below average”, the FFF contended that the signs were “highly similar”.  

The Court held that the contested trademark application and the earlier trademark both contained a figurative element representing a stylised rooster, which was, on the one hand, the sole element of the contested mark and, on the other hand, the dominant element of the earlier trademark.  

The Court acknowledged the applicant’s argument that the roosters were not identical and displayed certain differences in their representation: the roosters faced different directions, and there were differences in the details of the representation of their bodies and heads. Moreover, while the rooster in the contested application was depicted solely in black, white and shades of grey, the rooster in the earlier trademark was in white and red.  

Nevertheless, the overall impression created by the figurative elements was similar, particularly as the average consumer would retain only an imperfect recollection of them, and the figurative elements shared the following similarities:  

• Both roosters were shown in profile;  
• The plumage constituted the representation of the roosters’ bodies;  
• The feathers were depicted through a series of curves arranged in the same manner in both signs; and  
• The roosters’ heads were represented without any outline and with four basic elements: a dot representing the eye, a chevron shape indicating an open beak, and drawings of a wattle and a comb, which are characteristic of a rooster.  

The Court further stated that the similarities between the roosters did not arise solely from generic coincidences but, more importantly, from the fact that the roosters were represented in the same highly stylised manner. This stylised representation resulted in the omission of certain generic characteristics common to roosters, which further increased the visual similarity of the signs at issue. For instance, the roosters did not have visible legs, as their bodies appeared to balance on a single feather.  

Regarding the conceptual comparison of the signs, established case law states that a category of imagery cannot be monopolised, and the applicant rightly highlighted that no likelihood of confusion can be established merely because two trademarks represent or include the same animal. According to case law, conceptual similarity arises when two trademarks use images that align in their semantic content, meaning that the images convey the same idea or concept. The Board of Appeal had correctly concluded that the signs at issue coincided in the concept of a highly stylised rooster depicted in an impressionistic manner. Although the earlier trademark also included the verbal element ‘FFF’, this did not affect the conceptual perception of the mark.  

The Court thus upheld the Board’s decision.  

Key takeaways 

This decision is notable for the reasoning applied in comparing the signs and highlights the following two principles:  

1. The decision does not result in a general prohibition on using the representation of a rooster in a complex sign. As rightly argued by the EUIPO, the likelihood of confusion, in this case, did not stem merely from the fact that the signs at issue contained a representation of a rooster but, rather, from the particular way in which the roosters were represented.  

2. As to the applicant's argument concerning an alleged divergence from previous EUIPO decisions, it is important to recall that the legality of the EUIPO's decisions must be assessed solely based on Regulation 2017/1001, as interpreted by the EU judiciary, and not based on the EUIPO’s prior decision-making practice. 

To find out more about EU trademarks or the opposition procedure, speak to your Novagraaf attorney or contact us below.  

Florence Chapin is a Trademark and Design Attorney at Novagraaf in France.  

This article first appeared in WTR Daily, part of World Trademark Review, in January 2025. For further information, please go to www.worldtrademarkreview.com.