Golden Balls wins trade mark dispute

Well this week finally some common sense was introduced to the absurd world of EU trade mark law.

Case T‑437/11 Golden Balls Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Intra-Presse, the General Court of the European Union in a 30-paragraph segment of its decision agreed that that there was no trade mark infringment and addressed the comparison of marks, concluding:-

“As regards the overall assessment of the likelihood of confusion, the Court notes, first … that the signs at issue are not identical or extremely similar conceptually, but at most slightly similar. Accordingly, contrary to what the Board of Appeal found …, it must be held that, even if the goods at issue are identical, that weak, or very weak, conceptual similarity which requires a prior translation cannot suffice to make up for the visual and phonetic dissimilarities which exist.

In that context, it is apparent from settled case-law … that the possibility cannot be ruled out that a mere conceptual similarity between two marks can create a likelihood of confusion where the goods are similar, provided, however, that the earlier mark has a high distinctive character. It is sufficient to note that such a specific distinctive character of the mark BALLON D’OR has not been established in the present case as regards the goods concerned. Moreover, even if that mark enjoys a high distinctive character, and whilst taking account of the identical character of the goods in question, the very weak conceptual similarity, requiring prior translation, cannot, in the circumstances of the case, be sufficient to create, in itself, a likelihood of confusion on the part of the target public ….

Therefore, it must be held that the Board of Appeal was wrong to find the existence of a likelihood of confusion on the part of the relevant public for the identical goods covered by the signs at issue in Class 16. Due to the fact that the signs at issue are in different languages, a manifest distinction is created between them so that … the average consumer will not immediately associate them without undergoing an intellectual process of translation …”.

It begs the question as to why the previous decisions went against Golden Balls and highlights the nonsense that can often originate from the EU.

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