Golden Balls vindicated as General Court gets it right

PROLOGUE: ancient but relevant school playground joke, circa 1958 

Man: "What's the difference between an elephant and a post-box?" 

Child: "I don't know. What is the difference between an elephant and a post-box?" 

Man: "If you don't know, I'm not going to ask you to post my letters!"

Even seasoned readers of this weblog might wonder what this joke is doing here.  Let this Kat explain.  The words ELEPHANT and POST-BOX are visually different even though, if you count the hyphen in POST-BOX, each has eight characters.  The words ELEPHANT and POST-BOX are also pronounced differently in every one of the twenty-odd official languages of the European Union, not to mention all of the unofficial languages (Irish, Turkish, Esperanto and Textese, to name but a few).  However, they have a surprisingly great degree of conceptual similarity.  Each has a hole through which things enter; each is best approached from the front; each is surprisingly difficult for an individual to lift without aid and, in the economic and ecological climate of the early twenty-first century, each is in danger of becoming extinct.  It may well be, therefore, that in the world of European trade mark law a relevant consumer, faced with the words ELEPHANT and POST-BOX, might indeed be confused, or assume that there was some association between them.

*********************************************

This Kat has occasionally been known to associate himself with causes, but none which has meant as much to him as the valiant battle of the mum-and-dad team of Inez and Gus Bodur, a lovely couple who represent the best of British values in terms of small business entrepreneurship. United by a common affection for coffee and chocolate croissants, the Kat and Mr and Mrs B have spent many a long hour musing over the problems faced by any small business in trying to trade while fighting time-consuming and deliberately cost-generating litigation (a vast quantity of material had to be translated from French to English before it could be seen to be irrelevant) while simultaneously discharging their sacred role as parents to two lovely young children.

The Kat first found out about the Battle of the Bodurs back in July 2010, when he read in the press that the Office for Harmonisation in the Internal Market's Opposition Division rejected what seemed to him to be a spurious and bullying challenge to their Community trade mark (CTM) application for the GOLDEN BALLS word mark by French-based Intra-Presse, which claimed a likelihood of confusion based on the similarity of that mark to its own BALLON D'OR [the French for "ball of gold", explains Merpel] under Article 8(1)(b) of the CTM Regulation; a further ground of opposition was founded under Article 8(5) in respect of marks with reputation, but that didn't go far.  The Bodurs had applied for registration in respect of goods in Classes 16, 21 and 24; Intra-Presse's earlier CTM was for goods in a large number of classes, and all of the GOLDEN BALLS goods were taken to be identical or similar to those for which BALLON D'OR was registered.

Said the Opposition Division, the opposition had to fail: the marks were neither identical nor similar, but "globally dissimilar", which is the Opposition Division's way of saying "no way, Jose". But the Bodurs' good fortune was soon to change.  Astonishingly and inconceivably, the Board of Appeal upheld Intra-Presse's appeal in respect of goods in Class 16.  While there was no visual or phonetic similarity between the two marks, they had suddenly become "identical" or "at least extremely similar" to the point at which the relevant consumer -- in this case the general public in the European Union -- would be likely to conclude that there was a likelihood of confusion or association.  What could have been going on in the minds of the Board of Appeal members is anyone's guess.  Perhaps they are the sort of people who have to be really careful when they book their holidays in case they confuse Land's End with the conceptually identical Finisterre.

The sad and tragic part is that, if you read the Board of Appeal's decision, you can actually find yourself nodding in agreement with it: the Board did not go out on a folly of their own, a whimsical and spontaneous outburst of startling originality. No, they applied the warped and over-reasoned doctrines of Community trade mark law in a manner that was actually plausible. The result, when measured against the real world in which businesses do business and in which shoppers shop: nonsense.

Today, in Case T‑437/11 Golden Balls Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Intra-Presse, the General Court of the European Union did something which it is rarely given credit for doing: it restored some sanity to this absurd and conceptually-driven world of European trade mark law. In the 30-paragraph segment of its decision that addresses comparison of marks, the Court concludes:

"49. As regards the overall assessment of the likelihood of confusion, the Court notes, first ... that the signs at issue are not identical or extremely similar conceptually, but at most slightly similar. Accordingly, contrary to what the Board of Appeal found ..., it must be held that, even if the goods at issue are identical, that weak, or very weak, conceptual similarity which requires a prior translation cannot suffice to make up for the visual and phonetic dissimilarities which exist.

59 In that context, it is apparent from settled case-law ... that the possibility cannot be ruled out that a mere conceptual similarity between two marks can create a likelihood of confusion where the goods are similar, provided, however, that the earlier mark has a high distinctive character. It is sufficient to note that such a specific distinctive character of the mark BALLON D’OR has not been established in the present case as regards the goods concerned. Moreover, even if that mark enjoys a high distinctive character, and whilst taking account of the identical character of the goods in question, the very weak conceptual similarity, requiring prior translation, cannot, in the circumstances of the case, be sufficient to create, in itself, a likelihood of confusion on the part of the target public ....

60 Therefore, it must be held that the Board of Appeal was wrong to find the existence of a likelihood of confusion on the part of the relevant public for the identical goods covered by the signs at issue in Class 16. Due to the fact that the signs at issue are in different languages, a manifest distinction is created between them so that ... the average consumer will not immediately associate them without undergoing an intellectual process of translation ...".

This Kat congratulates and personally expresses his gratitude to Michael Edenborough QC (Serle Court), Shireen Smith (Azrights) and Mark Anderson (Anderson Law LLP) for the tremendous support they have given Gus and Inez.

Earlier Katposts on this litigation:

• EPO Implicated in Golden Balls dispute here
• Golden Balls and Bullies: a Timely Update here
• Never Mind the Golden Rabbits: What about the Golden Balls? here

NOTE: in his excitement to post this item, the Kat overlooked the fact that there are actually two cases here, T-437/11 and T-448/11 -- both involving the same marks and reaching the same conclusion.