The CJEU on the cross-class protection of the trademark “Ballon d’Or”

By decision of 20 November in joined cases C-581/13 P and C-582/13 P, the Court of Justice of the European Union (“CJEU”) ruled on the cross-class protection of well-known trademarks in relation to Intra-press’ sign “Ballon d’Or”, i.e. the name of the famous football award that is registered as a Community Trademark (“CTM”).

Here are the facts. In October 2007, the British company Golden Balls Ltd submitted two applications for CTM registration of the Golden Balls trademark for different classes of goods and services, including, among others, sporting activities, toys and television programmes. Intra-press, having become aware of these applications, promptly opposed them because of its own CTM Ballon d’Or, registered, among others, for the above goods specified in the application for the registration of the sign Golden Balls.

The First Board of Appeal of the Office for the Harmonization in the Internal Market (“OHIM”) partially upheld the oppositions, allowing the registration of the Golden Balls trademark only for products other than those covered by the Ballon d’Or trademark, due to the risk of a serious likelihood of confusion between the two trademarks, had they been used for identical or similar products. According to the OHIM, in fact, the two signs were visually and phonetically different, but identical or at least very similar from a conceptual point of view.

Unsatisfied with only partial victories, both parties acted before the General Court of the European Union (“GC”) to have the OHIM’s decision annulled. Subverting the findings of the latter, the GC noted that the trademark Ballon d’Or could not hinder the registration of the sign “Golden Balls” either for identical products, due to the weak similarity between the two signs, or from a conceptual point of view (basically because of the different languages used), which was insufficient to generate a serious likelihood of confusion.

Intra-press then appealed the judgment before the CJEU, which upheld the appeal in part. In fact, after stating not to have jurisdiction to review the GC’s assessments in respect of the two signs’ perception and understanding by the relevant public (since these are issues of merit), the CJEU finds that there was an error in law in the GC’s assessment of the possibility of recognising the cross-border protection of reputed trademarks to the earlier trademark. The CJEU in fact points out that the GC had noted a (weak) degree of conceptual similarity between the two trademarks. In this situation, given Inter-press’ claim that its trademark should be protected as a reputed trademark, the GC should have assessed whether it in fact enjoys a reputation. Where this was proven, in fact, it would certainly exclude the possibility of a later registration of a similar trademark, not only for similar products, but also for totally different products, if such registration is able to generate an unfair advantage to the proprietor of the later trademark, or is detrimental to the distinctive character or the reputation of the earlier trademark.

As a consequence, the CJEU partially annulled the appealed judgement.