Never mind the golden rabbits, what about the Golden Balls?

Readers will recall a recent report on this weblog concerning the battle faced by London-based small business operators Gus and Inez Bodur to protect their GOLDEN BALLS Community trade mark application, for goods in Nice Classes 16, 21 and 24, from an opposition by French firm Intra Presse, organisers of the Ballon D'Or ("Golden Ball", in French), the European Footballer of The Year Award. Intra Presse's earlier rights were registered for goods and services in Classes 9, 14, 16, 25 and 41, and the grounds of opposition were based on both similarity + likelihood of confusion (Art 8(1)(b) of Regulation 207/2009 on the Community Trade Mark) and repute of the earlier mark, under Art 8(5) of the same Regulation. Following a careful comparison of the marks on the basis of global appreciation, the OHIM Opposition Division ruled in the Bodurs' favour in no uncertain terms:

"From the comparison of the trade marks it emerges that the trade marks are visually and phonetically different and conceptually slightly similar for a part of the English speaking public and the French speaking public in that they share the idea of “ball/balloon” via the terms “BALLS” and “BALLON”. The Office considers that the similarities between the trade marks are not such that they are likely to overshadow the differences which remain significant. In fact, the fact that the terms “GOLDEN” and “D’OR” are not recognized, respectively, by the French speaking and English speaking consumer, as well as their position (at the start of the trade mark for one and at the end of the mark for the other) reinforces these differences".

"Finally, even if the Opponent had proved that his earlier trade mark had acquired a highly distinctive character as a result of its repute or its use, this would have no bearing on the aforementioned conclusions. This is all the more true as the Opponent has indicated that his trade mark had become highly distinctive as a result of its fame for sporting competitions, which have nothing to do with the products in the case".

[Quotes from an unofficial English translation from the original French -- about which more below].

The IPKat understands that Intra Presse is appealing, though he does not yet know the specific grounds of appeal. He is disappointed to learn this, since (i) the Bodurs are a lovely couple, who have espoused the small business values that successive British governments claim they support, and this appeal is depressing news for them; (ii) they have really suffered in commercial, financial and family terms through the drain on their time, physical and mental strength and emotional resources as they fight a battle that, they feel (and this Kat agrees) should never have to be fought, and (iii) are they are in danger of being ruined by the constant need to translate everything into French in order to support their Community trade mark application, even though the representatives of Intra Presse are perfectly capable of working in English and make mention of their ability to do so on their website.

This Kat is not blaming Intra Presse and representatives from using every legitimate weapon at its disposal to grind down and eradicate its foes, but he is unhappy that the system operates to such a manifest disadvantage of small and ill-resourced traders in situations such as this. Merpel agrees and says this: the more Intra Presse feels it has to do everything in French, the more it emphasises the gulf between comprehension of English and French and therefore the unlikelihood that consumers would associate GOLDEN BALLS with BALLON D'OR.

A tidied-up version of the unofficial English translation of the Opposition Division decision will be reported later this year in Sweet & Maxwell's European Trade Mark Reports (ETMR).