A recent decision of the General Court of the European Union allows use and registration of the trademark GOLDEN BALLS by Golden Balls Limited, despite a 6 year long legal battle brought by Intra-Presse, the owners of the BALLON D’OR trade mark. The issues revolved around the rights and reputation in an internationally recognised football award, which translates to “Ball of gold”.
The background
In 2002, Golden Balls Limited was established, and began to use the trademark GOLDEN BALLS in respect a variety of goods, including sportswear. When the British company looked to expand in Europe in 2007, as a consequence of them having entered into a licensing agreement with the game show organisers Endemol, a number of legal difficulties were encountered. This was despite securing UK trademark protection for GOLDEN BALLS in respect of “Clothing, footwear and headgear” back in 2001.
Intra-Presse, are the organisers of the BALLON D’OR award which is given to the European footballer of the year. They filed oppositions against both of the community trademark applications for GOLDEN BALLS. These were based on the likelihood of confusion between the trademarks, and the vast reputation that Intra-Presse had acquired.
The issues
The opposition division of the community trademark office found in favour of Golden Balls Limited, holding that the respective trademarks GOLDEN BALLS and BALLON D’OR were “globally dissimilar”. Hence, there was no likelihood of confusion. This decision was subsequently appealed by Intra-Presse to the Board of Appeal, where surprisingly the trademarks were found to be conceptually identical or highly similar, to the extent that the average French consumer would believe that the trademark GOLDEN BALLS is a translation of the earlier trademark BALLON D’OR. Therefore, in light of the fact that the trademarks were being applied to identical goods, the assumption would be made that the two undertakings were linked. The appeal therefore succeeded in relation to the identical Class 16 goods in issue, namely “Paper, cardboard and goods made from these materials”, but not in relation to all of the goods that were being objected to.
On referral to the General Court of the European Union (GC), some order was restored. The decision of the GC was handed down on 16 September 2013, finding that that the trademarks GOLDEN BALLS and BALLON D’OR are not conceptual identical or highly similar and, once translated, can only be deemed to be slightly similar.
It was held that although a mere conceptual similarity between two trademarks can create a likelihood of confusion when the goods are similar. The earlier trademark must have established a highly distinctive character. In this case, the trademark BALLON D’OR had not established sufficient distinctive character to render the trademarks in issue confusingly similar, particularly given that they require translation. The Board of Appeal had mistakenly found the respective trade marks to be conceptually identical or highly similar. Given that the signs at issue are in different languages, the average consumer is not likely to “immediately associate them without undergoing an intellectual process of translation”.
Summary
The decision reached by the GC is welcomed and appears to be pragmatic. It gives hope and reassurance to small businesses that investing in their brand and defending their position is worthwhile, provided their case has merit.
