Anna Dannreuther, Trainee, Research Department of the CJEU (All views author’s own)
The Court of Justice of the European Union (CJEU) issued a judgment on November 20th in the case of Intra-Presse SAS v OHIM (the ‘Golden Balls’ case), which did not resolve the seven-year trademark dispute between the UK company Golden Balls Ltd. and Intra-Presse, the French organizers of FIFA’s Ballon d’Or award. The case revolves around the registration of the word mark ‘Golden Balls’. The CJEU referred the case back to the Office for Harmonization in the Internal Market (“OHIM”), providing specific instructions on how to evaluate one of the grounds for appeal.
Background
In 2007, Golden Balls Ltd., a family-run business, applied to register the word mark ‘Golden Balls’ as a Community Trade Mark. Intra-Presse filed an opposition in 2008 based on their earlier registration of the Community Trade Mark ‘Ballon d’Or’, citing Article 8(1)(b) and 8(5) of the Community Trade Mark Regulation No 40/94 (now found in Regulation 207/2009).
Article 8(1)(b), the ‘confusion ground,’ allows for refusal of registration if there is a likelihood of public confusion due to the similarity of the trademarks and the goods or services they represent. Article 8(5), the ‘reputation ground,’ allows for refusal even for dissimilar goods or services if the later mark is similar to an earlier mark with a reputation in the Community and Member State concerned, and if registration would unfairly exploit or harm the earlier mark’s reputation.
The OHIM’s First Board of Appeal found the two marks ‘extremely similar’, upholding Intra-Presse’s opposition under Article 8(1)(b). Golden Balls’ mark was registered only for goods not covered by ‘Ballon d’Or’, dismissing Intra-Presse’s opposition under Article 8(5).
The General Court overturned this decision on appeal, finding the conceptual similarity between ‘Ballon d’Or’ and ‘Golden Balls’ too weak to outweigh their visual and phonetic differences and create confusion. It also found the marks insufficiently similar for Article 8(5), rejecting Intra-Presse’s entire opposition.
Intra-Presse appealed on three grounds: (i) distortion of facts in assessing the relevant public’s abilities; (ii) infringement of Article 8(1)(b); and (iii) infringement of Article 8(5).
Judgment
The Court stated it lacked jurisdiction over the first two grounds, as appeals to the CJEU are limited to points of law under Article 256(1) TFEU and Article 58 of the Statute of the Court of Justice of the European Union. Intra-Presse’s pleas were deemed manifestly unfounded and inadmissible.
On the third ground, the Court reaffirmed its case law, particularly Ferrero v OHMI, stating that Article 8(1)(b) and 8(5) require different degrees of similarity. The former requires a likelihood of public confusion, while the latter requires an overall assessment of potential harm to the earlier mark’s reputation based on any degree of similarity. This includes considering the earlier mark’s reputation within the Community and relevant Member State. The case was sent back to OHIM for reevaluation based on this guidance.
Comment
While not the outcome either party desired, the case highlights the different degrees of similarity required to establish injury under Articles 8(1)(b) and 8(5). Significantly, any degree of similarity under Article 8(5) necessitates a comprehensive assessment of potential harm to the earlier mark’s reputation, taking into account its existing reputation.
More intriguing are the arguments about the relevant public’s linguistic abilities regarding conceptual similarity. While the Court dismissed these as factual appraisals, OHIM’s findings will be noteworthy. Intra-Presse argued that the General Court erred in requiring prior translation of the marks to establish conceptual similarity. They contended that when marks use basic words understood by the public in various languages, there is no ‘intellectual process of translation’ or ‘prior translation’ by the consumer. The meaning, they asserted, is immediately understood regardless of the consumer’s native language.
This raises important questions about the impact of language differences on the likelihood of confusion among the multilingual European Union’s citizens. To what extent do cultural differences, such as varying language proficiencies among member states, factor into this assessment? What is the average French or British consumer’s level of linguistic knowledge? There have been cases establishing conceptual similarity where opposing marks use different official languages of the relevant consumer’s territory (Organismos Kypriakis Galaktokomikis Viomichanias v OHIM, Garmo AG, Case T-534/10) and where consumers understand the English word ‘shark’ without prior translation (Osotspa Co. Ltd v OHIM, Case T-33/03). However, there hasn’t been a detailed discussion of ‘prior translation’ or an assessment of French and English-speaking consumers’ language abilities. Hopefully, this case will ascend to the CJEU, prompting a ruling on this pressing issue.
Photo credit: Daily Mail