Golden Balls Limited, a family run sportswear retailer based in London has won a long fought trade mark dispute against Intra Presse the organizers of the FIFA “Ballon D’Or” football award. See Judgment of the Court.
Shop owners Inez and Gus Bodur had been trading under the name “Golden Balls” since the company’s incorporation in March 2002. Having successfully secured the UK word mark “Golden Balls”, the couple applied to register a community trade mark for same name in classes 16, 21 and 24 in October 2007. On 16 May 2008, Intra Presse filed a notice of opposition based on its earlier community word mark “Ballon D’Or” which was registered on 7 November 2006 in a large number of classes including Class 16 (paper; cardboard; printed matter; photographs and other stationery materials). 
On 19 May 2010, the opposition was rejected on the basis that the signs were visually and phonetically different. The court acknowledged the risk that certain consumers could see the marks as conceptually “slightly similar” however globally they were unlikely to cause confusion.Intra Presse argued that the similarity of the marks could cause a likelihood of confusion or association in the market (Articles 8(1)(b) and 8(5) of the CTM Regulation (207/2009)). Surprisingly this was not the end of the story. On 26 May 2011 the OHIM Board of Appeal partially upheld an appeal brought by Intra Presse. Although visually and phonetically different, conceptually the marks were regarded as identical “or at the least extremely similar” and there was a likelihood that the general public in the EU would be confused when purchasing Class 16 products. The Bodurs sought to challenge the decision resulting in a positive albeit costly result for the couple. The General Court held that the marks were visually, phonetically and conceptually distinct. Although the marks called to mind the same idea—a golden balloon or ball—the fact that Intra Presse’s earlier mark was in French and that the Bodurs were seeking to apply for a mark in English could not be disregarded. The average EU consumer would not be able to make an immediate conceptual comparison without translating one of the marks. The Court held that a mere conceptual similarity can create a likelihood of confusion where goods are similar, however the Intra Presse mark was not sufficiently distinctive in respect of Class 16 goods for this to apply. The Court then turned to the English translation of “Ballon D’Or” (“Ball of Gold” or “Gold Ball”). Although again “slightly similar”, it decided that the general public in the EU would not immediately connect the translation to the English plural “Golden Balls” or in any event assume the two were associated. It was decided that there was at most a “weak or even very weak degree of conceptual similarity” for the reasonably observant French-speaking public. Even though the marks were similar and both related to an identical class of goods, the translation hurdle coupled with the clear visual and phonetic differences between the signs meant that the Bodurs were entitled to use the “Golden Balls” name. Although undoubtedly a ‘cup-winning’ result for the Bodurs, the case demonstrates that trade mark litigation can be prohibitively expensive for small businesses. The Bodurs were said to have spent approximately £100,000 fighting the case, allegedly forcing them to close their shop premises.
This article was prepared by Lâle Kemal (lale.kemal@nortonrosefulbright.com / +44 20 7444 2313) of Norton Rose Fulbright’s London Intellectual property group.
