denominations with the distinctive GOLDEN BALLS. The first of the requests
referred to classes 9, 28 and 41 while the second designated the classes
16, 21, 24. The mark GOLDEN BALLS refers to sports clothing items and a license was later granted to name a product in this way. contest broadcast on British television.
These requests were opposed by the French company Intra-Presse,
organizer of the best soccer player of the year award, based on your brand
previous community BALLON D'OR registered in classes 9, 14, 16, 18, 25, 28,
38, 41.
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| Ballon d'Or (from Jaime de la Fuente via Wikimedia) |
oppositions were examined in the first instance by the Division
of Opposition of the OHIM which were totally rejected and
granted the requested marks. Intra-Presse then appealed against both
rejection resolutions before the Board of Appeals of the OHIM. Room
Resources partially estimated the resources understanding that the brands were
conceptually similar and that most of the products and services in
common classes were identical. It only considered that some products
specifics in some of these classes were different.
Golden
Balls appealed the decisions of the Board of Appeal to the General Court, which, for its part,
understood that (cases T-437 / 11 y T-448 / 11) the
conceptual similarity between both brands was low since, among other things,
To understand that GOLDEN BALLS was similar to BALLON D'OR required a
prior translation of the name and recognizes the absence of risk of
confusion between signs.
resources presented (C-581/13 P and C-581/13 P). In its ruling the Court indicates that, therefore
regards products that had been classified as different, was committed
an error of law since the argument based on art.
8.5, i.e. the notoriety of the previous trademark BALLON D'OR. As said
examination did not take place, the Court of Justice annuls the resolutions of the
Court of General and the Board of Appeal of the OHIM and returns
finally the matter to the OHIM to assess whether the mark is well-known in the
community territory and taking this into account, whether there would be a risk of confusion
among the public.
appreciates the Court of Justice in its Judgment, The General Court does not enter into
assess whether or not the BALLON D'OR brand enjoys notoriety in the territory
community. This examination has a special relevance since, according to art. 8.5
RMC, if two brands are considered similar from the point of view
denominative or conceptual but are applied to different products or services, they are
must deny registration of the new trademark application if the previous trademark
is considered notorious and there is improper use of said
notoriety.
the assessment of the conceptual similarity between
GOLDEN BALLS and BALLON D'OR, it is true that, as the Court indicates
General, from the perspective of the French consumer it is not immediate
association between the name GOLDEN BALLS and the award for the best player in the
BALLON D'OR year. Consequently, it seems that the appreciation of the
confusion between the marks would be different from the point of view of the
art. 8.1b – there may be no risk of confusion – or 8.5 RMC which seems
would lead one to understand that there could indeed be a risk of connection and
bonding. Therefore, We will have to wait for the new assessment by the
OHIM of the notoriety requirement and its decision on the existence of risk
of confusion between the brands.
