Case T‑437/11
Golden Balls Ltd
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — Application for Community word mark GOLDEN BALLS — Earlier Community word mark BALLON D’OR — Similarity of the signs — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 — Application for annulment filed by the intervener — Article 134(3) of the Rules of Procedure of the General Court — Scope of the examination to be carried out by the Board of Appeal — Obligation to rule on the entirety of the action — Articles 8(5), 64(1) and 76(1) of Regulation No 207/2009)
Summary — Judgment of the General Court (First Chamber), 16 September 2013
1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Criteria
(Council Regulation No 207/2009, Art. 8(1)(b))
2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Attention level of the public
(Council Regulation No 207/2009, Art. 8(1)(b))
3. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Complementary nature of the goods or services
(Council Regulation No 207/2009, Art. 8(1)(b))
4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
5. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Word marks GOLDEN BALLS and BALLON D’OR
(Council Regulation No 207/2009, Art. 8(1)(b), and (5))
6. Community trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope
(Council Regulation No 207/2009, Arts 64(1), first sentence, and 76(1))
7. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks
(Council Regulation No 207/2009, Art. 8(5))
1. See the text of the decision.
(see paras 20-22, 53, 54)
2. See the text of the decision.
(see para. 23)
3. See the text of the decision.
(see para. 29)
4. See the text of the decision.
(see paras 32, 33)
5. For an average EU consumer, there is no risk of confusion, for the purposes of Article 8(1)(b) of Regulation No 207/2009 on the Community Trade Mark, between the verbal sign GOLDEN BALLS, registration of which as a Community trade mark is sought in respect of products falling within Classes 16, 21 and 24 of the Nice arrangement, and the mark BALLON D’OR previously registered as a Community trade mark in respect of goods and services falling within Classes 9, 14, 16, 18, 25, 28, 38 and 41 of that arrangement. 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.
Even if the goods in Class 16 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. Whilst, under the case-law, 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, no such specific distinctive character of the mark BALLON D’OR has 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.
As regards the goods covered by the trade mark applied for falling within Classes 21 and 24, which are different from those covered by the earlier trade mark, the signs at issue lack the similarity required for the purposes of applying Article 8(5) of Regulation No 207/2009.
(see paras 58-60, 72, 73)
6. See the text of the decision.
(see para. 69)
7. See the text of the decision.
(see para. 71)