The
Court of Justice partially sets aside the judgments of the General Court
regarding registration of the sign GOLDEN BALLS as a Community trade mark.
OHIM
must reassess whether that sign may be registered, giving consideration to
whether its similarity with the mark BALLON D’OR, albeit low, is sufficient for
the public to establish a link between the two marks.
According
to the Community Trade Mark Regulation1 a trade mark cannot be registered if
there is a likelihood of confusion on the part of consumer because it is
identical or similar to an earlier trade mark and the goods or services covered
by the two trade marks are identical or similar.
Furthermore, if the two trade marks are
identical or similar, registration of the new mark must, even where the goods
and services are different, be refused if the earlier trade mark has a
reputation in the EU or in a Member State and if use of the new trade mark
would take unfair advantage of, or be detrimental to, that reputation.
In June
and October 2007, Golden Balls, a British company, filed applications with
OHIM, the Community trade mark office, for registration of the word mark GOLDEN
BALLS as a Community trade mark for various goods and services.
Intra-Presse,
the French company which organises the Ballon d’Or (an award given to the best
footballer of the year), filed notices of opposition against those
applications. The oppositions were based on the Community word mark BALLON
D’OR, which OHIM registered for Intra-Presse in 2006.
By two
decisions, OHIM upheld the oppositions in part and registered the mark GOLDEN
BALLS only for goods that are different from those covered by the trade mark
BALLON D’OR. OHIM took the view that, conceptually, the
two word marks were at the very least extremely similar, which was likely to
cause confusion for the public if they were used for goods or services that are
identical or similar.
Golden
Balls brought two actions before the General Court for annulment of OHIM’s
decisions. Intra-Presse also applied to the General
Court for the annulment of those decisions, on the view that OHIM had been
wrong to dismiss its oppositions in part.
In its
judgments of 16 September 2013, the General Court held that the trade mark
BALLON D’OR did not constitute a barrier to the registration of the mark GOLDEN
BALLS as a Community trade mark. According to the
General Court, those signs had only a weak degree of conceptual similarity
and could therefore
be registered even for identical or similar goods and services, because there was no likelihood
of confusion.
Intra-Presse brought two appeals before the Court of
Justice against those judgments.
In today’s judgment, the Court dismisses the
appeals to the extent that they concern registration of the mark GOLDEN BALLS
for goods identical or similar to those covered by the mark BALLON D’OR,
because there is no likelihood of confusion.
On the other hand, the Court points out that,
according to the General Court’s own findings, there is a low degree of conceptual
similarity between the two marks at issue. Accordingly, as regards goods covered
by the mark GOLDEN BALLS but different from those covered by the mark BALLON D’OR, the
General Court should have determined whether the low degree of similarity was
nevertheless sufficient, on account of the presence of other relevant
assessment factors (such as the reputation or recognition enjoyed by the
earlier mark), for the public to make a link between those two marks.
The Court holds that, by failing to assess those
factors, the General Court erred in law. It follows that the judgments of
the General Court must be set aside to the extent that they dismissed
Intra-Presse’s applications for annulment.
Choosing to rule itself on the substance of the dispute, the Court
finds that, since Intra-Presse’s oppositions concern, inter alia, goods
different from those for which Golden Balls seeks coverage, OHIM should have
assessed whether the mark BALLON D’OR had a reputation in the European Union or
in a Member State and whether registration of the new mark was liable to be
detrimental to that reputation because the public could assume that the two
marks were linked. However, OHIM did not carry out that assessment, which meant
that it failed to carry out a full assessment of the oppositions filed by
Intra-Presse.
Consequently, the Court also annuls the decisions
of OHIM to the extent that they dismissed Intra-Presse’s oppositions
against registration of the mark GOLDEN BALLS for goods that are different from
those covered by the mark BALLON D’OR.
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