EUIPO rejects “WESTHAM” opposition: a cautionary tale on proof of use and reputation

The EU Intellectual Property Office (EUIPO) recently issued its decision in West Ham United Football Club Ltd v Röben Tonbaustoffe GmbH, rejecting an opposition brought by the club against an application to register the mark “WESTHAM” for building materials in class 19.

The opposition was based on Article 8(1)(b) (likelihood of confusion) and Article 8(5) (reputation and unfair advantage) of the EUTM Regulation. Ultimately, the EUIPO dismissed the opposition in its entirety. The decision provides a clear illustration of the evidential burden placed on opponents, particularly where proof of use and reputation within the EU is an issue.

Proof of use: the foundation falls away

The starting point for the decision was proof of use. Two of the earlier marks relied upon by West Ham had been registered for more than five years, meaning that the club was required to demonstrate genuine use within the European Union during the relevant period (11 January 2019 to 10 January 2024).

The evidence submitted did not meet that threshold.

The EUIPO undertook a detailed review of the materials put forward, which included references to commemorative bricks and stones, online merchandising, and supporter club activity. However, it was found that this evidence failed to establish genuine commercial use in the relevant territory.

In particular, the decision highlights that:

• the commemorative “bricks” relied upon were not building materials but memorial objects;and were more closely aligned with monument-related services;
• there was no clear evidence of scale, such as turnover, sales volumes or commercial reach;
• much of the activity was either UK-focused or insufficiently linked to the EU; and
• key elements such as timing and territorial use were unclear or unsupported.

The EUIPO reiterated that the assessment of genuine use requires a cumulative analysis of time, place, extent and nature. Where one or more of these elements is missing, the claim is unlikely to succeed.

As a result, the earlier “WEST HAM” word and figurative marks fell away entirely and could not be relied upon for the purposes of the opposition.

Likelihood of confusion: dissimilar goods, no claim

The opposition, therefore, proceeded on a more limited basis, relying on a remaining “WEST HAM UNITED” registration.

However, the likelihood of confusion was quickly dismissed. The EUIPO found that the goods and services at issue were clearly dissimilar. On one hand, the application covered tangible construction materials such as bricks and roofing tiles. On the other hand, the opponent’s rights related primarily to advertising, retail and digital or virtual goods/services. The decision emphasises that similarity cannot be established simply because goods might be promoted through similar channels. The goods differed in nature, purpose and method of use, and were not complementary or competitive.

As the similarity of goods and services is a necessary condition for a finding of likelihood of confusion, the claim failed at that stage.

Reputation: the evidential gap

The most instructive aspect of the decision is the EUIPO’s treatment of the reputation claim under Article 8(5). West Ham relied on its long-standing history as a football club, its global profile and visibility, and its successes, including participation in European competition (which the decision records as part of the evidence relied upon).

However, the EUIPO found that this evidence did not establish reputation within the EU. The decision makes clear that reputation requires evidence that a significant part of the relevant public in the EU recognises the mark in connection with the relevant goods or services. General assertions of fame, even where credible, are not sufficient without supporting data.

A consistent theme throughout the reasoning is the absence of territorially targeted evidence. For example, while the opponent relied on substantial social media followings and financial information, there was no indication of what proportion of that activity related to the EU. Similarly, press coverage and rankings demonstrated prominence, but did not establish the degree of recognition among EU consumers. The EUIPO also gave little weight to anecdotal or isolated materials, including references to individual fan engagement, noting that such evidence carries limited probative value in a market of over 450 million consumers.

Crucially, the EUIPO emphasised that evidence relating to the UK after Brexit could not be relied upon to demonstrate reputation in the EU. This proved to be a significant limitation in the overall evidential picture. In the absence of clear evidence addressing market share, intensity of use, promotional investment or consumer recognition within the EU, the EUIPO concluded that the reputation threshold had not been met.

Key takeaways

This decision reinforces several practical points for brand owners:

Proof of use and reputation are fundamentally evidential exercises. Even strong underlying activity will not suffice unless it is properly documented and presented in a way that aligns with the legal tests.

Territoriality remains critical. For EU proceedings, evidence must demonstrate use and reputation within the EU itself. UK-focused evidence, particularly post-Brexit, will carry limited weight.

Reputation is a high threshold. It requires clear, data-driven evidence showing that a significant proportion of the relevant EU public recognises the mark for the goods or services relied upon.

Finally, evidence must be structured and targeted. The decision underlines that it is not enough to point to brand prominence or general visibility. Opponents must clearly connect their evidence to the specific goods or services at issue and demonstrate recognition in the relevant market.