Golden Balls, en Francais, Need Another Look

     (CN) – Europe may have one too many golden balls, at least in the view of its highest court.
     In 2007, British company Golden Balls – run by a married couple selling sportswear that became haute couture when actress Gwyneth Paltrow was spotted wearing one of their T-shirts – filed an application with the EU trademark office to register its name.
     But a year before, Intra-Presse of France had registered its own mark for the Ballon d’Or – “ball of gold” – an award given to the nation’s top FIFA footballer. In light of this, the trademark office opted to register Golden Balls’ mark only for goods that are different than those of Intra-Presse, given the “extreme similarity” of the two word marks.
     Both companies appealed to the European General Court for annulment of the trademark office’s decision, with both wanting complete control of any mark having to do with any type of golden balls.
     Last year, the EU General Court found that Ballon d’Or and Golden Balls weren’t similar enough to cause customer confusion, even when placed on similar goods like T-shirts and sportswear.
     Predictably, Intra-Presse appealed to the European Court of Justice.
     The EU high court dismissed Intra Presse’s appeal Thursday by holding that the two word marks will not confuse consumers even when placed on identical goods, given that they’re in two different languages.
     But the Luxembourg-based court also found that the lower court didn’t go far enough in its findings of a low degree of conceptual similarity between the marks, since it did not consider the potential damage to Ballon d’Or’s reputation as provided for by EU trademark law.
     “Consequently, in accordance with case-law, the General Court was wrong to rule out the application that portion of trademark law without first undertaking an overall assessment of the marks at issue in order to ascertain whether that low degree of similarity was nevertheless sufficient, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, for the relevant public to make a link between those marks,” the court wrote.
     Rather than tossing the case back to the lower court, however, the Court of Justice opted to let the trademark office decide – since it never addressed the reputation issue at all in its original assessment.
     “In the present cases, that obligation to examine the merits of the appeal must be understood as meaning that the trademark office’s board of appeal was obliged to decide on each of the heads of claim submitted for its consideration in order to give a decision on the oppositions by either rejecting them or declaring them to be founded, thereby either upholding or reversing the decisions,” the court wrote.
     So the trademark office must reassess whether to register Golden Balls, considering whether even a low similarity to the Ballon d’Or mark is enough for consumers to establish a link, the court concluded.
     The couple who started Golden Balls, Gus and Inez Bodur of north London, say “Golden Balls” was Inez’s nickname for her husband.
     It is also the nickname of soccer superstar David Beckham – a fact that likely fueled Intra-Presse’s dismay over the registration.

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