"Golden Balls" = "Ballon d'Or"?

The Court of Justice of the European Union (EuGH) had to decide whether the marks "Golden Balls" and "Ballon d'Or" are confusingly similar. The proprietor of the latter mark took this view, which uses the mark "Ballon d'Or" for a well-known sports prize. It justified its legal opinion by reference to the outstanding reputation of its mark and the conceptual similarity of the marks.

In 2007, a British company filed an application for registration of its trade name "Golden Balls" with the Office for Harmonization in the Internal Market (HABM) for various goods and services. The organiser of the well-known sports prize "Ballon d'Or", awarded to the best footballer of the year, the French company Intra-Presse, filed an opposition against the registration of the British company's mark, as it perceived a likelihood of confusion with its mark already registered in the EU since 2006. In particular, "Golden Balls" was merely a translation of its mark "Ballon d'Or" and should therefore – due to the outstanding reputation of its own mark – be refused for all the goods and services applied for.

The HABM granted the oppositions to the extent that the goods and services concerned did not differ from those covered by the mark Ballon d'Or. According to the European Trade Mark Office, the marks possessed a strong conceptual similarity, which could lead to confusion among the relevant public.

Against this decision, the British company brought an action before the General Court (EuG). The General Court annulled the HABM's decision and held that the mark Ballon d'Or did not preclude registration of the sign Golden Balls as a Community trade mark and could itself be registered even for identical or similar goods and services.

Against this decision, the company Intra-Presse then defended itself before the EuGH.

Decision of the Court

The Court of Justice of the European Union decided by judgment of 20.11.2014 – Az. C-581/13 P (Press Release), that the HABM had not given sufficient consideration to the arguments put forward by the company Intra-Presse and referred the dispute back to the Trade Mark Office.

The HABM should have examined whether the mark Ballon d'Or is known in the EU or in any of the Member States and whether this reputation could be impaired by the registration of the new mark, because the public would mentally establish a link between the two signs. However, the HABM failed to conduct this examination and thus did not fully examine the oppositions of the proprietor of the earlier mark.

Conclusion

As a result, the Trade Mark Office must now reconsider the opposition filed by the French company and must take into account the reputation of the earlier registered mark "Ballon d'Or" in its assessment.