In the latest heat of this long-running David and Goliath battle concerning competing trade marks GOLDEN BALLS and BALLON D'OR (French for 'ball of gold'), the CJEU has held that the case should be
In the latest heat of this long-running David and Goliath battle concerning competing trade marks GOLDEN BALLS and BALLON D'OR (French for 'ball of gold'), the CJEU has held that the case should be referred back to OHIM to be re-assessed and the earlier judgments of the General Court and Board of Appeal partially set aside.
Background
Golden Balls Ltd is a family-run business which was set up in 2002 by husband and wife, Gus and Inez Bodur to sell Golden Balls t-shirts, tracksuits and boxer shorts. They also licensed their name to Endemol for the television game show 'Golden Balls' hosted by Jasper Carrott. In 2007, the company applied to register a CTM for GOLDEN BALLS covering a range of goods and services. Intra-Presse, organisers of the prestigious Ballon D'Or football award, opposed the registration claiming that the mark GOLDEN BALLS would be confused with the famous Ballon d'Or football award and would take advantage of the reputation of Ballon D'Or or would be detrimental to its distinctive character ("the Reputation Submission").
OHIM First Instance
OHIM allowed the registration of the trade mark holding that the signs were visually and phonetically different and that the conceptual similarity (for the English and French speaking part of the relevant public) was only slight and not enough to establish a likelihood of confusion.
Board of Appeal
Intra-Presse then appealed to the First Board of Appeal, which partially granted the appeal by holding that it was enough that conceptually the marks were identical/extremely similar. There was a likelihood of confusion for most of the goods and services. They did not go on to consider Intra-Presse's Reputation Submission in relation to the non-similar classes of goods covered by the GOLDEN BALLS application.
EU General Court
The Bodurs appealed to the General Court (GC), which overturned the decision and held that, although there was a slight conceptual similarity between the marks, they were not similar enough to cause confusion. The GC did not think it necessary to consider the Reputation Submission.
CJEU
Intra-Presse then appealed to the CJEU which delivered its recent ruling on 20 November 2014, partially setting aside the GC's decisions. The CJEU ruled that as the GC had identified a slight conceptual similarity between the marks, it should have carried out an overall assessment of them to determine whether, notwithstanding the low degree of similarity, there was, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the 'Ballon d'Or' mark, enough for the relevant public to make a link between those marks.
The Board of Appeal had an obligation to consider each head of claim presented to it. As it had failed to consider the Reputation Submission, the CJEU annulled the decision in part and referred the case back to OHIM to re-consider.
Comment
OHIM will now re-assess whether the mark 'GOLDEN BALLS' should be registered in light of the earlier mark 'BALLON D'OR' and will determine whether the (low) similarity between the marks is such that the relevant public would establish a link between the marks.
Background
Golden Balls Ltd is a family-run business which was set up in 2002 by husband and wife, Gus and Inez Bodur to sell Golden Balls t-shirts, tracksuits and boxer shorts. They also licensed their name to Endemol for the television game show 'Golden Balls' hosted by Jasper Carrott. In 2007, the company applied to register a CTM for GOLDEN BALLS covering a range of goods and services. Intra-Presse, organisers of the prestigious Ballon D'Or football award, opposed the registration claiming that the mark GOLDEN BALLS would be confused with the famous Ballon d'Or football award and would take advantage of the reputation of Ballon D'Or or would be detrimental to its distinctive character ("the Reputation Submission").
OHIM First Instance
OHIM allowed the registration of the trade mark holding that the signs were visually and phonetically different and that the conceptual similarity (for the English and French speaking part of the relevant public) was only slight and not enough to establish a likelihood of confusion.
Board of Appeal
Intra-Presse then appealed to the First Board of Appeal, which partially granted the appeal by holding that it was enough that conceptually the marks were identical/extremely similar. There was a likelihood of confusion for most of the goods and services. They did not go on to consider Intra-Presse's Reputation Submission in relation to the non-similar classes of goods covered by the GOLDEN BALLS application.
EU General Court
The Bodurs appealed to the General Court (GC), which overturned the decision and held that, although there was a slight conceptual similarity between the marks, they were not similar enough to cause confusion. The GC did not think it necessary to consider the Reputation Submission.
CJEU
Intra-Presse then appealed to the CJEU which delivered its recent ruling on 20 November 2014, partially setting aside the GC's decisions. The CJEU ruled that as the GC had identified a slight conceptual similarity between the marks, it should have carried out an overall assessment of them to determine whether, notwithstanding the low degree of similarity, there was, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the 'Ballon d'Or' mark, enough for the relevant public to make a link between those marks.
The Board of Appeal had an obligation to consider each head of claim presented to it. As it had failed to consider the Reputation Submission, the CJEU annulled the decision in part and referred the case back to OHIM to re-consider.
Comment
OHIM will now re-assess whether the mark 'GOLDEN BALLS' should be registered in light of the earlier mark 'BALLON D'OR' and will determine whether the (low) similarity between the marks is such that the relevant public would establish a link between the marks.