It's time for elephants and post-boxes again: Intra-Presse appeals to CJEU

Gus and Inez Bodur

Last September this Kat heaved a hearty cheer as the General Court got things right in Cases T-437/11 and T-448/11 when they threw out Intra-Presse's opposition to Katfriends Gus and Inez Bodur's application to register the words GOLDEN BALLS as a Community trade mark. No, said the Court, reinstating the decision of the Opposition Division, there was no likelihood of confusion among relevant consumers between products marked GOLDEN BALLS and those marked BALLON D'OR.   Nor was there any taking advantage of the Intra-Presse mark. Why? Because the marks were quite sufficiently different, thank you very much.  This Kat, writing about the General Court's ruling, was reminded of the difference between an elephant and a post-box.  To quote the General Court in T-437/11:

"58. 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.

"If they're not golden, I'm not going
to play with them", said Tabitha

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 ...".

The story has not ended here: there is an appeal, though not all will find the appellant appealing. Like some ghoulish monster emerging from the crypt in which we all thought it had been interred, Intra-Presse has crawled out again into the light of day, to lodge an appeal with the Court of Justice of the European Union (CJEU) in what are now Cases C-581/13 P and C-582/13 P Intra-Presse v OHIM [the cases both involve the same marks, but involves some different classes of goods and services]. There are two grounds of appeal:

"First, the General Court infringed Article 8(1)(b) CTMR [that's the Community Trade Mark Regulation, here] in defining the relevant public, in assessing the degree of conceptual similarity between marks by adding a requirement of “intellectual process of translation”, “begin by translating” or “prior translation”, and in omitting to take the reputation of the earlier mark for services in Class 41 into account. 

Secondly, the General Court infringed Article 8(5) CTMR by failing to carry out a global assessment and omitting to examine the relevance of the reputation of Appellant’s earlier mark and the existence of a possible link".

In C-582/13 P the second ground of appeal is identical but the first ground of appeal is slightly different:

"First, the General Court infringed Article 8(1)(b) CTMR in defining the relevant public and in assessing the degree of conceptual similarity between marks by adding a requirement of “intellectual process of translation”, “begin by translating” or “prior translation”".

As is often the case with cases heading for the CJEU, the UK Intellectual Property Office is calling for comments which will enable it to advise the UK government whether to make representations. If you'd like to do so, just email policy@ipo.gov.uk by 7 February 2014.  Sorry about the short notice! This Kat received notification a couple of days ago but the emails were submerged in the mass of incoming correspondence to which he is still struggling to respond.