The team is joined by: GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopoulou, Mathilde Pavis, and Eibhlin Vardy; by InternKats Ieva Giedrimaite, Rose Hughes, and Cecilia Sbrolli; and by Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Thursday, 4 January 2018

"Stars" on the football field; less so in the Trademark Office?


While football teams compete vigorously on the pitch, they tend to stay away from each other over disputes regarding their marks and names. Au contraire, however, when it comes to the design of a star, at least in the context of football in Romania. Kat friend Florica Rus describes just how complex these disputes over a "star" have become.

Not all contests between rival football teams take place on the pitch. One of the most prolonged such disputes has long been playing out in Romania over trademark for a star and one of Romania`s most revered football teams, Steaua Bucharest (“Steaua” means “the star” in Romanian), the only Romanian team to have won the UEFA Champions League championship (1986). Stakes are high, as both the Romanian Army`s Sport Club Steaua and FC Steaua Bucharest (FCSB) are claiming trade mark rights over Steaua Bucharest and the benefits that derive from its illustrious sporting history. Kat readers are invited to select a beverage of their choice and join this guest Kat as she sounds the proverbial whistle that marks the beginning of this football-focused trademark tale.

The Steaua Bucharest football team was created in 1947 and originally it was run by the Romanian Army as part of the Army`s Sport Association, later known as the Army’s Sport Club Steaua (hereinafter CSA Steaua). CSA Steaua is comprised of several separate sports teams, including football, basketball and rugby. The football department of CSA Steaua went private in 1999 and later changed its name to FC Steaua Bucharest, while continuing to play in the First League of Romanian football.

At the beginning of 2004, FC Steaua Bucharest filed for trademark protection for the mark Steaua (fig.). Soon thereafter, CSA Steaua filed an application for a similar mark.

Romanian mark no. 061735 registered in 3 December 2004 - FC Steaua Bucharest:

Romanian mark no. 072827 registered in 12 July 2006 – CSA Steaua:


The struggle between FC Steaua Bucharest and CSA Steaua began in earnest in 2011 with the filing by CSA Steaua of an action to cancel the registration for mark no. 061735. CSA Steaua claimed bad faith registration, since consent for registering the mark no. 061735 had been refused at the beginning of 2004. Despite not expressly set out in the privatization agreement, CSA Steaua claimed that if FC Steaua Bucharest had the right to use a mark, the mark in question would have been Romanian mark no. 045638 because this was the mark used by CSA Steaua at the moment of privatization. As well, CSA Steaua submitted evidence that the privatization of FC Steaua Bucharest had been cancelled in 2003 as a result of a Government decision that cancelled the law on which the privatization had been based.

Interpreting the Government decision, which expressly referred to the CSA Steaua football complex, CSA Steaua argued that, as a result, FC Steaua Bucharest lacks any rights in the FCSA Steaua trademark, or indeed the right to use the football complex. As such, it was claimed, FC Steaua Bucharest did not have any legal basis to assert rights in any Steaua-based mark. In 2014, the Army successfully invalidated the registration for mark no. 061735 and in 2015 the Romanian Supreme Court affirmed this result.

This outcome led the parties to consider negotiations, but they were over as soon as they began. Consequently, FC Steaua Bucharest changed its name to FCSB and adopted another mark . CSA Steaua, for its part, decided to form a new football team, which commenced operations in the current 2017-2018 season, playing in the lowly Fourth League. Not surprisingly, supporters are divided over the two teams, given their joint heritage regarding the name Steaua. More specifically, the question remains: who is the heir to the sporting heritage and won-loss record of the team formed in 1947?

CSA Steaua claims that it is the successor of that team and it accuses FCSB of misusing the legacy of the football team established in 1947 in order to obtain more lucrative sponsorships. Indeed, FCSB identifies itself as the team that won the 1986 UEFA Champions League (the prominently displayed yellow star centrally located in its new mark captures this). UEFA shares this view, as it recognizes FCSB as being the real “STAR” - “FCSB celebrates winning the European Cup in 1986”. This position is also supported by the Romanian Football Federation and the Professional Football League. But CSA continues to challenge this claim.

Moreover, in May 2017, the Supreme Court rejected FCSB’s request to stay the decision by which it was prohibited from using the word "Steaua" to identify FCSB. Nevertheless, the Audiovisual Council of Romania concluded that third parties, e.g. TV channels, are free to use the name “Steaua” when distributing content in connection with FCSB, on the ground that the decision of the Supreme Court only applies to FCSB. Still, it is fair to say that most of the Romanians associate “Steaua” with FCSB.

But that is not all, as the teams continue to battle each other in the courts. In one invalidation proceeding filed by FCSB, constitutional matters were raised. The Constitutional Court has to decide the constitutionality of the Romanian Trade Mark Law nr. 84/1998 regarding provisions covering notoriety of the mark, use of the mark and termination of rights.

Even overseas individuals with no clear connection to any local football teams are seeking to tie themselves to the famous Steaua mark:

           Owner 1
EUTM no. 015837628



EUTM Application no. 015296411




           Owner 2
EUTM Application no. 017072752



Currently, EUTM application no. 015296411 is being opposed by both CSA Steaua and UEFA. As for EUTM Application no. 017072752, which has been published in 23 November 2017, it has already been opposed by the owner of EUTM no. 01529611.

The story of "stars", either on the football pitch or in the trademark office, seems never-ending. How all of this ultimately plays out against the backdrop of long forbearing Romanian football supporters is an on-going story that merits further watching.

Picture on top right by Pumbaa80 and is published under a Creative Commons Attribution-Share Alike 3.0 Unported license (https://creativecommons.org/licenses/by-sa/3.0/deed.en)

2 comments:

Starry eyed surprise said...

Steau Bucharest have never won the UEFA Champions League. What they have won is the precursor to that competition: the European Champion Clubs' Cup. The UEFA Champions League has only been run since 1992 (when a "league" or group stage was introduced, the competition being a straight knockout before that).

Further, "UEFA Champions League" is a registered trade mark of UEFA. I would have expected more care about the proper use of a trade mark from an IP blog.

Florica Rus said...

Thanks for your comment.

You are perfectly right with the former name of the competition. As on both websites, UEFA`s and FCSB`s, the name for the trophy is UEFA Champions League (on UEFA`s website both names are available), I have used the name that is currently and more prominently used, without any intention to discredit former names or trade mark rights.

Sports and trade marks are a never ending source of debate.

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