GOLDEN BALLS headed back to OHIM
These 'golden balls' have been bounced up through the Opposition Division and Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM), on to the General Court and then up to the Court of Justice of the European Union (ECJ) over a period of seven years. In Intra-Presse SAS v OHIM (Joined Cases C-581/13 P and C-582/13 P), the ECJ sent them a header and they bounced back down to OHIM for a reconsideration of whether GOLDEN BALLS is sufficiently similar to BALLON D’OR for the relevant public to establish a link between them.
In 2001 a husband and wife team in the United Kingdom set up a small company and filed a UK trademark application for GOLDEN BALLS (word) in Class 25 of the Nice Classification, which proceeded unopposed to registration in 2002. Golden Balls Limited (GBL) was incorporated that year and sold sportswear through its website during the Japan and Korea World Cup. The sportswear did well and GBL scored a fashion goal when one of its device marks (also on the UK register) was seen emblazoned on a t-shirt worn by Gwyneth Paltrow.
In 2007 GBL licensed GOLDEN BALLS to Endemol UK Plc for use in a TV game show called Golden Balls.
Back in the only slightly less glamourous world of trademark registers, GBL was steadily and successfully building up a trademark portfolio for GOLDEN BALLS (both word and device) with marks on both the UK and OHIM registers. However, GBL’s hitherto success rate came to a halt in 2007 when it filed three Community trademark applications for GOLDEN BALLS (word) in Classes 9, 28 and 41, 16, 21 and 24 and 4, 10 and 11, respectively.
Intra-Presse SAS, the company which organises the Ballon D’Or award (an award given to the best FIFA footballer of the year) opposed the three word applications for GOLDEN BALLS on the basis of, among other things, its earlier Community rights in BALLON D’OR, which it had filed in 2004 and registered in 2006. The BALLON D’OR mark was (and is) registered in Classes 9, 14, 16, 18, 25, 28, 38 and 41. Interestingly, Intra-Presse did not seem to have considered GBL’s earlier marks too much of a concern, although GBL's device marks contained the image of two golden balls which might be said to underpin and emphasise the word element of the mark.
GBL’s GOLDEN BALLS marks were opposed by Intra-Presse under Article 8(1)(b) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)), which prevents the registration of identical/similar marks for identical/similar goods or services where there exists a likelihood of confusion, and Article 8(5), which prevents registration of identical/similar marks for non-identical goods or services, where the earlier mark has a reputation and use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
Intra-Presse claimed that BALLON D’OR was similar to GOLDEN BALLS, including conceptually because 'ballon d'or' was French for 'golden ball' and the same overall impression was created. As GBL's marks had been filed for identical/highly similar goods and services, there was a likelihood of confusion, all the greater because BALLON D’OR was well-known for a sports competition.
The Opposition Division disagreed and rejected all three oppositions in their entirety under Article 8(1)(b). It held that, whilst the goods and services were in part identical and in part different, the signs were visually and phonetically different and there was only a slight conceptual similarity for one section (francophone) of the relevant public. The Opposition Division dismissed the Article 8(5) claim because the marks were dissimilar overall.
Intra-Presse was not best pleased and appeals were launched against the decisions on two GOLDEN BALLS (word) marks in Classes 9, 28 and 41 and Classes 16, 21 and 24. Intra-Presse decided not to appeal the third mark, which covered eclectic goods in Classes 4, 10 and 11.
The Board of Appeal partially upheld the appeals, holding that, with respect to identical goods and services in Classes 9, 16, 28 and 41, there was a likelihood of confusion or association between the signs. Whilst the Board of Appeal agreed with the Opposition Division’s reasoning that the signs were visually and phonetically different, it disagreed on the conceptual comparison and concluded that the signs were conceptually identical, or “at the very least”, extremely similar. Article 8(5) was, again, not considered.
This time neither party was happy with the decisions and both appealed to the General Court. GBL appealed to the General Court to annul the Board of Appeal’s decision in respect of certain goods and services in Classes 9, 16, 28 and 41, and contested the Board of Appeal’s findings regarding conceptual similarity. Intra-Presse also appealed, alleging infringement of Article 8(5).
The General Court came down resoundingly in the favour of GBL, confirming the board’s ruling of visually and phonetically different signs, but finding a “weak, or even very weak” degree of conceptual similarity. This weak degree of conceptual similarity was not sufficient to give rise to a likelihood of confusion, particularly as the conceptual weak similarity required “prior translation”. As to the Article 8(5) appeal, the General Court considered that the Board of Appeal should have ruled on Article 8(5) (for some of the goods and services) since it had found a likelihood of confusion under Article 8(1)(b). However, the General Court did not rule on whether the low degree of conceptual similarity was sufficient for the public to make a “link” between the signs, being one of the three cumulative conditions for the application of Article 8(5).
The General Court did, however, consider in some depth the plurality of GOLDEN BALLS compared to BALLON D’OR and the different positioning of the ‘golden’ element at the beginning instead of the end of the mark. Further, it stated that “due to the fact that the signs at issue are in different languages, a manifest distinction is created… so that the average consumer will not immediately associate them without undergoing an intellectual process of translation”.
Intra-Presse appealed to the ECJ. By this time, the golden balls had been passed between OHIM and the courts since 2007. The ECJ did not mince its words.
In relation to the registration of GOLDEN BALLS for goods identical or similar to those covered by BALLON D’OR, the ECJ red-carded Intra-Presse’s arguments that the General Court had wrongly assessed the relevant public, the conceptual similarity and the distinctiveness of BALLON D’OR. Intra-Presse also argued, with regard to the non-identical/similar goods in question, that the General Court had erred in its assessment of the conditions for the application of Article 8(5), arguing that the court had failed to examine the effect of BALLON D’OR’s reputation on the “link” between the signs due to an assumption that the marks lacked the requisite degree of similarity. The ECJ agreed. The General Court and the Board of Appeal should have considered whether the similarity between the marks was sufficient to establish a “link” on account of other factors such as the reputation of BALLON D’OR.
In this respect, the ECJ reconfirmed the different degrees of similarity required under Article 8(1)(b) and Article 8(5). Under Article 8(1)(b) there must be a degree of similarity between the marks so that there is a likelihood of confusion between them. This is not so for the protection conferred by Article 8(5), where the degree of similarity between marks may be less, provided it is sufficient for the relevant public to make a connection (link) between the two marks (see Ferrero v OHIM (C-552/09 P)).
The ECJ could have decided this point itself but instead chose to bounce the GOLDEN BALLS back down to the Board of Appeal which will now have to decide on whether GOLDEN BALLS is similar to BALLON D’OR, having regard to whether the similarity of the marks is sufficient for the relevant (francophone) public to establish a link between the two marks.
The cases are now back with the Board of Appeal, which shall be looking at the prerequisites to establish a link under Article 8(5). It is clear that the Board of Appeal has some serious reviewing of facts ahead of it. Intra-Presse does have some reputation in BALLON D’OR (albeit some not so desirable) and there is a (weak) conceptual similarity between the two marks. However, it is difficult to see on the facts how use of GOLDEN BALLS is likely to take unfair advantage of BALLON D’OR or damage it, bearing in mind its repute.
Given the time the cases have been running, one wonders whether the link has long been lost in poor translation.
Claire Lehr and Annie Clarke, Edwards Wildman Palmer UK LLP, London
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