Intellectual Property Bulletin - Winter 2013

TRADE MARKS

Use of unauthorised celebrity images in fashion - a case of passing off?

Please click here for our recent article on the use of unauthorised celebrity images in fashion.

Golden Balls and Ballon D'Or - a likelihood of confusion?

The EU General Court has annulled a decision of the OHIM Appeal Board and has ruled that the marks BALLON D'OR and GOLDEN BALLS are not so similar that they were likely to confuse customers.

Golden Balls Ltd v OHIM, Cases T-437/11 and T-448/11, 16 September 2013.

Comment

Mr and Mrs Bodur are now free to register GOLDEN BALLS as a CTM. The case illustrates the approach the Court is likely to take when considering an opposition concerning two similar marks (that is, similar in that one requires translation to be similar).

Background

Mr and Mrs Bodur, a husband and wife business team, ran their own successful business selling clothing out of a shop in Hampstead under the GOLDEN BALLS brand. The mark was registered in the UK in 2001. In 2007, the couple licensed the brand to a game show and applied to register the mark GOLDEN BALLS as a Community Trade Mark ("CTM"). Intra Presse (a large media company and organiser of the Footballer of the Year Award) commenced legal proceedings against the couple opposing the application, saying that GOLDEN BALLS was too similar to Intra Presse's own CTM BALLON D'OR. The goods for both signs were identical or similar. When translated from French to English, BALLON D'OR means golden ball.

Initially, the opposition was rejected by OHIM but Intra Presse successfully appealed. The legal action caused financial hardship for the Hampstead couple and the case was appealed to the EU General Court on a pro bono basis.

Decision

The EU General Court reversed the decision of the Appeals Board, allowing the couple to register their brand as a CTM. The Court ruled there was only weak conceptual similarity between the two marks and said that the marks were unlikely to confuse customers.

Key points

The Court noted the following:

The signs were not identical or extremely similar conceptually. At most, they were slightly similar; Even if the goods were identical, that weak or very weak conceptual similarity (which required a prior translation) was not sufficient to make up for the visual and phonetic dissimilarities which existed; and Even if BALLON D'OR enjoyed a highly distinctive character, and goods/services were identical or similar, the weak conceptual similarity (which required a prior translation) was not sufficient to create a likelihood of confusion on the part of the target public. The Court held that the Appeals Board was wrong to find the existence of a likelihood of confusion for certain goods and services (with the exception of specified services in class 9 for which the opposition was upheld).

PATENTS

Court of Appeal restates doctrine of privity of interest when considering whether a party is barred by estoppel from bringing patent revocation proceedings

Recently, the Court of Appeal considered the test to be applied when assessing whether there is privity of interest between a party to pending patent revocation proceedings and a third party (previously of the same group of companies) involved in earlier revocation proceedings concerning the same patent. The Court of Appeal...