OCTOBER 2013: CASE LAW SUMMARY
GENERAL COURT OF THE EUROPEAN UNION - Case T-437/11 - 16 September 2013 - Golden Balls Ltd versus the OHIM
Golden Balls Ltd filed a Community trade mark application for GOLDEN BALLS for products in Classes 16, 21 and 24.
Intra-Presse filed a notice of opposition against this trade mark application on the grounds of its earlier Community mark BALLON D’OR, registered for goods and services in Classes 9, 14, 16, 18, 25, 28, 38 and 41.
OHIM's Opposition Division rejected the opposition, finding that the signs were globally dissimilar.
OHIM's Board of Appeal held that the GOLDEN BALLS and BALLON D’OR signs are visually and phonetically different. Nevertheless, it held that they were identical or that there was a strong conceptual similarity between the signs and annulled the decision of the Opposition Division, finding that a likelihood of confusion between the marks existed.
Seized with an appeal, the General Court of the European Union held, in particular, that:
- A linguistic difference between the signs cannot [...] automatically suffice to exclude the existence of a conceptual similarity from the point of view of the relevant consumers. However, such a difference – in so far as it requires a translation on the part of the consumer – may, depending on, inter alia, the linguistic knowledge of the relevant public, the degree of relationship between the languages concerned and the actual words used by the signs at issue, of prevent, at least to some degree, an immediate conceptual comparison by the relevant public.
- In those circumstances, it has not been established that the meaning of the trade mark applied for comprising the words "golden" and "balls" will be immediately understood by the relevant public, namely the general public in the European Union, in particular the francophone public, which understands the French expression "ballon d’or" constituting the earlier trade mark.
Even assuming, [...] that the words "golden" and "ball" are part of basic English language vocabulary and that they are, therefore, as such, understandable for the average consumer, including the average francophone consumer, that does not mean that that consumer, who will generally [...] have a weak understanding of the English language, will immediately understand those words in their specific combination "golden balls" as an English translation of the French expression "ballon d’or" which constitutes the earlier trade mark.
The General Court of the European Union held that there was no confusion possible between the GOLDEN BALLS and BALLON D’OR trade marks and therefore annulled the decision of the OHIM's Board of Appeal.
It should be noted that the products covered by the trade marks at issue were common consumer products aimed at the general public (paper goods, household or kitchen utensils, textiles, etc.) and that the solution adopted by the Court would no doubt have been different had the products been intended for consumers with a very good knowledge of the English language (for example, products intended for IT professionals).