On the 20 November 2014, the European Court of Justice (ECJ) handed down its decision in Intra-Presse SAS v Golden Balls (Joined Cases C-581/13 P and C-582/13 P). The ECJ held that the General Court and the lower courts had erred in their application of the relevant laws and it therefore sent the case back to OHIM to consider a question of fact that had been overlooked.

The dispute, now entering its 8th year, began when Golden Balls Ltd applied to register the words ‘Golden Balls’ as a Community Trade Mark (CTM) in 2007. Intra-presse opposed the application on the basis of their earlier CTM ‘BALLON D’OR’. They relied on Article 8(1)(b) of the Community Trade Mark Regulation, arguing that the marks at issue were highly similar and likely to cause confusion among consumers. They also relied on Article 8(5), arguing that consumers would be likely to confuse the respective signs due to factors such as the reputation of the earlier trade mark.

The initial decision of the Opposition Division was appealed to the Board of Appeal, whose decision was in turn appealed to the General Court. The General Court was of the opinion that the mental effort of the “intellectual process of translation” rendered the marks dissimilar overall and that there was no likelihood of confusion between the marks for the purposes of Article 8(1)(b). Neither OHIM nor the Board of Appeal nor the General Court thought it relevant to consider the likelihood of confusion due to the reputation of the earlier mark under Article 8(5), however.

Intra-presse appealed the General Court decision to the ECJ. The ECJ upheld the decision of the General Court insofar as there was no likelihood of confusion between the marks for the purposes of Article 8(1)(b), as the marks were dissimilar overall. However, the ECJ held that the General Court had erred in its application of the law in relation to Article 8(5) concerning the reputation of the earlier Community Trade Mark. The ECJ pointed out that the degree of similarity between marks required for confusion is lower for Article 8(5), i.e. where one of the marks has a reputation. In their assessment of the marks the General Court had in fact found that there was a low degree of conceptual certainty between the marks. Although this similarity was insufficient for the purposes of the Article 8(1)(b), the ECJ held that the General Court should have assessed whether consumers would nevertheless make a link between the signs due to factors such as the reputation of the earlier mark, satisfying Article 8(5).

The ECJ ultimately held that each of the lower courts had erred in their application of the law relating to Article 8(5). As a result they sent the case back to OHIM to reassess whether the public are likely to establish a link between the two marks due to factors such as the reputation of the earlier mark, despite the relatively low degree of similarity between them.