The "Ballon D'Or" trademark is saved by the bell: The EU General Court declares its validity for entertainment services.
The EU General Court, in its recent decision of July 6 2022, ruled on the validity of the European word trademark "Ballon D'Or," registered in 2004 by the French company Les Éditions P. Amaury for classes 14, 16, 38 and 41 of the Nice Classification. This trademark refers to the renowned sports award presented to the best footballer of the year following a vote by international journalists.
In 2017, Golden Balls Limited filed, before the EUIPO, an application for revocation of the “Ballon D’Or” trademark pursuant to Articles 18 and 58 of Regulation No. 2017/1001. In fact, the European legislation provides that the owner of an EU trademark shall forfeit its rights in the circumstance where there is a lack of use of the trademark within five years of registration or, where the same is not used for five consecutive years thereafter.
In April 2020, the EUIPO's Cancellation Division declared the French company's trademark forfeited for all goods and services resulting from the registration except for "sports activities and, namely, the organisation of sports competitions and awarding of trophies" in Class 41.
The Board of Appeal of the same Office partially modified the earlier decision, declaring the trademark to be still valid for certain goods in Class 16, such as "printed matter, books and magazines". These decisions were based on the assumption that Les Éditions P. Amaury had not used, for some of the registered goods and services, the sign to which it belonged for a period of five consecutive years, and in particular for the period between September 26 2012 and September 25 2017.
The French company, disagreeing with the Office's decisions, appealed to the General Court of the EU, opposing the declaration of non-use of the trademark for some of the services in Classes 38 and 41, such as the broadcasting of TV programs and monitoring services and TV entertainment services.
The EU General Court only partially upheld the appeal filed by the French company, confirming the trademark's revocation for the services of broadcasting and monitoring TV programs, production of shows and films, and publication of books, magazines, periodicals and newspapers. According to the judge, the plaintiff failed to prove that it had maintained, during this period, its own telecommunications network that could be used by third parties. It is noted from the material evidence submitted that the Ballon d'Or award ceremony was broadcast thanks to the services of third-party companies that paid royalties to the appellant for the authorisation.
On the other hand, the owner of the "Ballon D'Or" trademark managed to prove the genuine use of the trademark for entertainment services and, in particular, for "entertainment, television entertainment and organisation of competitions (entertainment)" in Class 41 of the Nice Classification. For this reason, the EUIPO's decision was annulled insofar as it declared the trademark “Ballon D’Or” forfeited for non-use for such services.
