BREAKING 'GOLDEN BALLS' NEWS: the CJEU sends the case back to OHIM

Alberto Bellan

The trade mark decision everybody, including Jeremy and Merpel, was waiting for, ie that of the Court of Justice of the European Union (CJEU) in the GOLDEN BALLS saga [on which see earlier IPKat posts here, here, here, here, here, and here] has been finally released. 

Our good and talented friend Alberto Bellan explains this latest installment:

"It comes as no surprise that FIFA's idea of IP protection is even more bizarre than the selection procedure of the World Cup hosting countries [see, eg, the unfair IP catenaccio that Blatter's lovely organisation put in place for the Brazil World Cup]. 

Unsurprisingly, such unfortunate characteristic is common to a number of FIFA's friends, which have brought IP disputes even more senseless than playing football with temperatures reaching 50 C° degrees. 

This is the case of the (in)famous GOLDEN BALLS trade mark saga, which has occupied the European courts and this weblog's pages for almost seven years. 

That endless story should have finally come to an end today, with the decision that the Court of Justice of the European Union (CJEU) issued in Joined Cases C-581/13 P and C-582/13 P. It has not been so.

With such a long-standing story, a little bit of background is in order

Back in 2002 British couple Gus and Inez Bodurs set up a small company named Golden Balls Ltd, for the purpose of making t-shirts and boxer shorts. In 2007 they filed an application for registration of the Community word mark 'Golden Balls' for some products and services of classes 9, 28 and 41. Later on they licensed their trade mark for use by Endemol UK Plc in a TV game show named -- guess what? -- 'Golden Balls'. In earlier 2008 the French firm Intra Presse, organisers of the Ballon D'Or [French for 'Golden Ball', the European Footballer of The Year Award], filed an opposition on the basis of earlier Community word marks 'BALLON D’OR'. The latter covers, among other things, some products and services of the same classes, ie 9, 28, and 41. The grounds of opposition were based on both likelihood of confusion (Art 8(1)(b) of (now) Regulation 207/2009 on the Community Trade Mark) and repute of the earlier mark, under Art 8(5) of the same Regulation.

In 2010, the OHIM Opposition Division ruled in favour of the Bodurs, establishing that the signs were visually and phonetically different and that their slight conceptual similarity for a section of the relevant public (namely, the English and French speaking part) was not enough to establish likelihood of confusion and thus trigger protection under Art 8(5) [see IPKat posts here and here]. 

The Bodurs and, in the centre 

(though not the golden one), 

Phil Bayles

Intra Presse appealed the decision. In 2011 the First Board of Appeal of OHIM partially upheld the appeal. While visually and phonetically different, the Board said, 'Golden Balls' and 'Ballon D'Or' are conceptually "identical or at the least extremely similar" -- and that that was enough for likelihood of confusion to be established for all the goods and services involved, except for some goods in class 9. The Board held that it was not necessary to take into consideration Intra Presse's claims under Art 8(5).

In September 2013 it was the turn of the General Court (GC) to feature in the GOLDEN BALLS saga [T-437/11 and T-448/11; here's the IPKat report, featuring elephants and post letters]. The GC upheld the Opposition Division's view that the huge visual and phonetic differences and the slight conceptual adherences between the signs, globally considered, prevent those trade marks' to be considered similar under Art 8(1)(b). From the lack of similarity between the signs at issue for the purposes of Article 8(1)(b), the GC inferred the impossibility for 'Ballon D'Or' to access the extended protection provided under Article 8(5), whose application also requires "similarity" between the signs at issue. Thus, Intra Presse's claims were entirely dismissed. At that point, Intra Presse appealed the decision to the CJEU.  

In today's decision, the CJEU set aside the General Court's judgments and partially annulled the decisions of the Board of Appeal -- all in one go

In relation to the findings of the General Court, the CJEU focused on the relation between the conditions for claiming protection under Art 8(5) and under Art 8(1)(b) and, in particular, upon the different threshold of similarity that those provisions require.

Recalling its previous case law, the CJEU established that the threshold of similarity required for the application of Art 8(5) is substantially different from the one under Art 8(1)(b). 

Indeed, while implementation of protection for non-reputed trade marks is conditional upon a finding of a degree of similarity connected to likelihood of confusion between the signs, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5), whose types of injury may be the consequence of a lesser degree of similarity between the earlier and the later marks. So, when it comes to reputed trade marks the extended protection is actionable whenever the relevant public "makes a connection between those marks" or "establishes a link between them" [see CJEU case law in Ferrero v OHMI, C‑552/09 P, Adidas-Salomon and Adidas Benelux, C‑408/01, and Intel Corporation, C-252/07]. Accordingly, protection under Art 8(5) cannot be applied only when the assessment carried out for the purposes of Art 8(1)(b) leads to the conclusion that the marks at issue presents no similarity at all. By contrast, whenever event a very low degree of similarity between the signs exists, the Court is required to carry out

Could you establish a link?

"an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public".

Consequently, as the GC acknowledged that a slight conceptual similarity between 'Golden Balls' and 'Ballon D'Or' does exist, it should have carried out

"an overall assessment of the marks at issue in order to ascertain whether that low degree of similarity was nevertheless sufficient, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, for the relevant public to make a link between those marks".

Coming to the findings of the Board of Appeal, the CJEU recalled that it is that Body's duty to decide "on each of the heads of claim submitted for its consideration". As the Board of Appeal had considered unnecessary to examine the pleas that Intra Presse raised on the basis of Article 8(5), the CJEU said, it failed to fulfil that obligation. Thus, the CJEU annulled those decisions to the extent that they dismissed the appeals in relation to the non-similar goods in class 9 and referred the dispute back to OHIM for further consideration in light of the guidelines provided.

Merpel thinks that seven years is far-too-long a period of time to decide whether an earlier 'Ballon D'Or' trade mark could prevent a later 'Golden Balls' sign from being registered. This is even more despicable if one considers the significant economic efforts that small businesses like the one of the Bodurs have been making to defend their rights throughout the intricate EU court system. This expensive tiki taka between EU courts could maybe sound a little less depressing if one tries to figure out how this dispute could likely evolve. As per the CJEU's instructions, the Board of Appeal will now have to assess whether, regardless of actual confusion, the relevant public would establish a link between 'Golden Balls' and 'Ballon D'Or'. 

Community Trade Mark system's 

Rules of Procedure 

After that, however, Art 8(5) extended protection could find application only inasmuch as the use of 'Golden Balls' "takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trade mark". This seems a bit of good news for the Bodurs. While the establishment of a "link" between signs is one of the many slippery criteria of trade mark law that leave room to a great degree of arbitrariness, it is rather unlikely that one could demonstrate that the Bodurs' sign has free ridden on, or blurred or tarnished the good reputation of the FIFA's Award [the prestige of which has already been irremediably jeopardised after Messi and Ronaldo's monopolised it for the last seven years] in the past twelve years, or that that could ever happen in the future. Although there's still a long way to go, then, not all seems lost for the IPKat's couple of friends.

A list of kat-posts mentioning the Bodurs here.

The Bodurs' Facebook page here.

The Bodurs' shop before and after this lawsuit.

The Bodurs and the IPKat here."