In its judgment of 20 November in the case of Intra-Presse SAS v OHIM (the 'Golden Balls' case), the CJEU notably did not end the 7 year trade mark battle between the UK family-run company Golden Balls Ltd. and Intra-Presse, the French organisers of FIFA’s Ballon d’Or or European Footballer of the Year Award. In a dispute concerning the registration of the word mark ‘Golden Balls’, the eighth chamber of the CJEU sent the case back to the Office for Harmonization in the Internal Market (“OHIM”) to be decided on one of the grounds of appeal at issue in the case, and has given firm instructions on the assessment to be pursued.
In 2007, Gus and Inez Bodurs of Golden Balls Ltd., sought registration of the word mark ‘Golden Balls’ as a Community Trade Mark. In 2008, Intra-Presse filed opposition proceedings against the registration in respect of their earlier registered Community Trade Mark ‘Ballon d’Or’. They did so on the grounds of Article 8(1)(b) and 8(5) of the Community Trade Mark Regulation No 40/94, now found in Regulation 207/2009.
Under Article 8(1)(b), the ‘confusion ground’, registration may be refused if there exists a likelihood of confusion on the part of the relevant public because of the similarity between the two trade marks and the similarity of the goods and services covered by them. Under Article 8(5), the ‘reputation ground’, if the later mark is similar to the earlier mark and the earlier mark has a reputation in the Community and the Member State concerned, registration can be refused even for goods and services not covered by the earlier trade mark, where such registration would take unfair advantage of, or be detrimental to the repute of the earlier trade mark.
The First Board of Appeal of the OHIM held that the two word marks were ‘extremely similar’ [para 15]. On that basis they upheld Intra-Presse’s opposition under Article 8(1)(b), and only registered Golden Balls’ mark for goods not covered by the mark ‘Ballon d’Or’, thereby dismissing Intra-Presse’s opposition under Article 8(5).
On appeal, the General Court of the European Union found that the signs ‘Ballon d’Or’ and ‘Golden Balls’ only had a weak degree of conceptual similarity, which was not enough to offset their visual and phonetic dissimilarities [para 28] to create confusion. It also found that the signs lacked the requisite similarity for the purposes of applying Article 8(5). It thus rejected Intra-Presse’s opposition in entirety.
Intra-Presse appealed this judgment on three grounds; (i) distortion of the facts in the assessment of the abilities of the relevant public; (ii) infringement in Article 8(1)(b) of Regulation No 40/94; and (iii) infringement of Article 8(5) of Regulation No 40/94.
As regards the first two grounds, the Court held that it had no jurisdiction to rule on appraisals of fact, 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 [paras 38 and 63]. It accordingly found Intra-Presse’s pleas manifestly unfounded and manifestly inadmissible respectively.
Regarding the third ground of appeal, the Court reiterated its case law, notably Ferrero v OHMI, and stated that the degree of similarity required under Article 8(1)(b) and under Article 8(5) of the Regulation is different. For the former there must be such a degree of similarity as to lead to a likelihood of confusion on the part of the relevant public. For the latter, any degree of similarity triggers an overall assessment of the possibility whether registration of the later trade mark might be detrimental to the reputation of the former. Included in this assessment is whether the former trade mark has a reputation in the Community and Member State concerned. Accordingly, the Court sent the case back to the OHIM to adjudicate afresh on these matters, taking into account the guidance given in the judgment.
Not quite the judgment that any party wanted, the case nevertheless serves as a useful reminder that the degree of similarity needed in order to establish injury under both Article 8(1)(b) and Article 8(5) is different. Notably, under Article 8(5) any degree of similarity triggers an overall assessment of whether registration of the later mark would be injurious to the earlier mark. Integral to this assessment is the earlier mark’s reputation.
Of greater interest is the parties’ argumentation concerning the linguistic capabilities of the relevant public in relation to conceptual similarity. As the Court dismissed these grounds as appraisals of fact, OHIM’s findings in this respect may be interesting. Intra-Presse argued that the General Court had erred in law by stating that prior translation of the word marks was needed before it could be recognised by the relevant public as conceptually similar. It added that when word marks are composed of basic words in various languages understood by the public, then there is no ‘intellectual process of translation’, nor does the consumer engage in ‘prior translation’ or ‘begin by translating’ [para 57]. It asserted that the meaning of those words would be immediately understood by the relevant public, whatever its mother tongue.
This case thus raises important linguistic issues. Given the multilingual nature of citizens of the European Union, to what extent do differences in the language of the word marks affect the likelihood of confusion of the relevant public? To what extent does this take into account cultural differences, such as U.K citizens’ lesser ability to speak languages, as compared to, say, Luxembourgish citizens? Specifically, what is the degree of linguistic knowledge of the average French or British consumer? We have seen cases where conceptual similarity is established when the languages of opposing word marks are both official languages of the territory of the relevant consumer (Organismos Kypriakis Galaktokomikis Viomichanias v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Garmo AG, Case T-534/10, 13 June 2012 E.T.M.R. 55) and where German, Finnish, Dutch, Danish and Swedish consumers are able to understand the English word ‘shark’ with prior translation (Osotspa Co. Ltd, established in Bangkok (Thailand) v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Case T-33/03, 9 March 2005 E.C.R. 2005 page II-00763). However, we have not seen a case where the notion of ‘prior translation’ is discussed in detail, or a case assessing the language capabilities of the francophone and anglophone public. Here’s hoping that the case rises through the ranks and we see a CJEU ruling on this imminently.
Photo credit: Daily Mail