Click here to view image

This case started seven years ago, back in 2007, when Golden Balls Ltd filed two applications with OHIM for the registration of the word mark GOLDEN BALLS as a Community trademark. 

In 2008, Intra-Presse filed a notice of opposition against both of these trademark applications, based on Intra-Presse’s earlier Community word mark BALLON D’OR.

It asserted that there was a likelihood of confusion on the part of the public because both the marks and the goods and services were identical or similar (article 8 (1) (b)). Secondly, it based its oppositions on the assertion that its earlier trademark BALLON D’OR was a trademark with a reputation, similar or identical to the later GOLDEN BALLS trademarks, and that, even if the goods and services were dissimilar, the later GOLDEN BALLS trademarks would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of its earlier BALLON D’OR mark (article 8 (5)).

Decisions of the OHIM Opposition Division on 19 and 31 May 2010

The Opposition Division rejected both oppositions because it found that the goods and services covered by the signs at issue were partly identical and partly different. The signs were visually and phonetically different, and slightly similar conceptually for one section of the relevant public. As the signs were dissimilar overall, there was no likelihood of confusion (article 8 (1) (b) Regulation No. 40/94). As regards the matter of the reputation of the earlier mark, the Opposition Division considered that, since the signs were dissimilar, article 8 (5) Regulation No. 40/94 was not applicable.

Decisions of the Board of Appeal of OHIM on 26 May and 22 June 2011

Intra-Presse appealed against both decisions and in 2011 the First Board of Appeal of OHIM upheld the appeals in part and registered the mark GOLDEN BALLS only for the goods that were dissimilar from those covered by the mark BALLON D’OR. 

Judgments of the General Court on 16 September 2013

Both Golden Balls Ltd and Intra-Presse appealed against the decisions of the Board of Appeal of OHIM and on 16 September 2013 it was the turn of the General Court to issue its decisions. The General Court decided that the trademark BALLON D’OR did not constitute a barrier to the registration of the mark GOLDEN BALLS as a Community trademark. 

Judgment of the CJEU of 20 November 2014

Intra-Presse filed the ultimate appeal and on 20 November 2014 the CJEU rendered its judgment. The CJEU set aside the General Court’s judgments and at the same time annulled the decisions of the Board of Appeal of OHIM. 

In relation to the judgments of the General Court, the CJEU dismissed the appeals and confirmed the General Court’s judgments to the extent that they concern the registration of the mark GOLDEN BALLS for goods identical or similar to those covered by the mark BALLON D’OR, because, based on the lack of similarity of the signs, there is no likelihood of confusion within the meaning of article 8 (1) (b) Regulation 40/94.

To the extent that the General Court inferred from the lack of similarity between the signs for the purposes of article 8 (1) (b) that there was a lack of similarity for the purposes of article 8 (5), however, the CJEU decided that the General Court was wrong. 

Referring to its previous case law, the CJEU reiterated that the degree of similarity required under article 8 (1) (b) on the one hand, and article 8 (5) on the other, is different. Whereas the implementation of non-reputed trademarks under article 8 (1) (b) is conditional upon a finding of a degree of similarity causing a likelihood of confusion, the existence of such a likelihood of confusion is not necessary for the protection conferred by article 8 (5). The types of injury under article 8 (5) may be the consequence of a lesser degree of similarity between the earlier and the later marks, provided that it is sufficient for the relevant public to make a connection between those marks, i.e. to establish a link between them.

As a consequence, the General Court was wrong to rule out the application of article 8 (5) without first making an overall assessment to ascertain whether that low similarity was nevertheless sufficient, given the presence of other relevant factors (such as the reputation of BALLON D’OR), for the relevant public to make a link between those marks.

The second turn of the Board of Appeal of OHIM

OHIM will now have to reassess the case and make an overall assessment of whether the relevant public would establish a link between GOLDEN BALLS and BALLON D’OR based on the alleged reputation of the BALLON D’OR trademarks.

And so the GOLDEN BALLS trademarks saga continues…