In its decision of 16 September 2013 (T-437/11), the General Court of the European Union annulled the decision of the Community trade marks Office’s Board of Appeal to partially refuse an application to register the trade mark 'Golden Balls', on the basis of an earlier right for 'Ballon D'or'
When assessing whether trade marks are similar, a global assessment must be carried out, taking into account visual, aural and conceptual similarities (or lack of). It was readily agreed that the respective marks are visually and aurally quite dissimilar. However, contrary to the Office’s original findings, the Board of Appeal found that 'Golden Balls' and 'Ballon D'or' ('ball of gold' in French) were conceptually and, it followed, globally overall 'identical or at least extremely similar' marks.
In reviewing the appeal, the General Court focussed on the translation process that would need to be carried out by the average francophone consumer, with an understanding of English:
The marks are plural and singular respectively, and 'golden' and its equivalent 'd’or' appear at opposite ends of the marks being compared. While this renders the translation process only slightly more difficult, the Court found that 'those differences are capable of impeding the immediate discovery of the similar hidden meaning of the signs'. Even if it is accepted that the consumer is capable of, and would carry out, such an analysis it is 'improbable that the result of such an analysis would spontaneously come into [the consumer’s] mind'. Consequently the signs have a weak or very weak conceptual similarity and overall there is no likelihood of consumer confusion. The refusal to register 'Golden Balls' is overturned.
Notwithstanding the above, the Court explicitly stated that a linguistic difference between signs cannot 'automatically suffice to exclude the existence of a conceptual similarity'. This decision seems to turn on the need for an intellectual translation process – perhaps the case would have been decided differently if the marks in question were 'Blue Ball' and 'Ballon Bleu', where the process is arguably more straightforward.
This note was produced by Burges Salmon’s Intellectual Property team, which is led by Jeremy Dickerson.