Different degrees of similarity between normal and reputed trade marks lead to separate assessment

Author: Alberto Bellan (Universita' degli Studi di Milano)

Intra-Presse SAS and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Golden Balls Ltd, Joined Cases C-581/13 P and C-582/13 P, Court of Justice of the European Union (CJEU), EU:C:2014:2387, 20 November 2014

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv043, first published online: March 18, 2015

The degree of similarity required under Article 8(1)(b) and Article 8(5) of Regulation 207/2009, must be assessed differently. Article 8(1)(b requires a degree of similarity leading to a likelihood of confusion while Article 8(5) can be satisfied by a lower degree of similarity which exists whenever the relevant public make a connection between those marks or establishes a link between them. Whenever the opponent bases an opposition on both Article 8(1)(b) and Article 8(5), the court must assess the degree of similarity between the signs separately, such double assessment being avoidable only where the signs present no similarity at all.

Legal context

Under Article 62(1) of Regulation 40/94 (Article 64(1) of Regulation 207/2009 on the Community Trade Mark currently in force, the CTMR):

Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal.

Under Article 8(1)(b) of Regulation 40/94 and the CTMR:

Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered … if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Under Art 8(5) of Regulation 40/94 and the CTMR:

… upon opposition by the proprietor of an earlier trade mark… , the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community … where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Facts

In 2002, Golden Balls applied to register two Community word marks for some products and services in Classes 9, 16, 21, 24, 28 and 41. Intra-Presse, organizer of the FIFA Ballon d'Or competition, subsequently filed an opposition on the basis of its earlier Community ‘Ballon d'Or’ word marks, covering some products and services in classes 9, 14, 16, 28, and 41. The grounds of opposition were based on both likelihood of confusion under Article 8(1)(b) of Regulation 40/94 and repute of the earlier mark under Article 8(5) of the same Regulation.

In 2010 the Office for Harmonisation in the Internal Market (OHIM) Opposition Division ruled in favour of Golden Balls, establishing that the signs were visually and phonetically different, and that their slight conceptual similarity for a section of the relevant public (namely, the English and French speaking part) was not enough to establish likelihood of confusion and thus trigger protection under Article 8(5) of CTMR.

In 2011, an OHIM Board of Appeal partially upheld the appeal. While the marks were visually and phonetically different, the Board of Appeal found that the ‘Golden Balls’ and ‘Ballon d'Or’ signs were conceptually ‘identical or at the least extremely similar’. Accordingly, likelihood of confusion under Article 8(1)(b) CTMR could be established for all the goods and services involved, except for some goods in class 9 and all the goods in classes 21 and 24. The Board of Appeal held that it was not necessary to take into consideration Intra-Presse's claims under Art 8(5) CTMR.

In 2013, the General Court (GC) dismissed Intra-Presse's claims in their entirety, holding that the huge visual and phonetic differences and the slight conceptual adherences between the signs, globally considered, lead those trade marks to be considered dissimilar under Article 8(1)(b) CTMR. From the lack of similarity between the signs at issue for the purposes of Article 8(1)(b), the GC inferred the impossibility for ‘Ballon d'Or’ to access the extended protection provided under Article 8(5), whose application also requires ‘similarity’ between the signs at issue. Intra-Presse appealed the GC's judgment to the Court of Justice of the European Union (CJEU).

Analysis

The CJEU partially annulled the decisions of the Board of Appeal, and referred the case back to the latter for further consideration and set aside the General Court's judgments.

As regards the Board of Appeal's decision, the CJEU noted that Art 62(1) of Regulation 40/94 and Art 64(1) of the CTMR, as interpreted in earlier CJEU case law (OHIM v Kaul, C-29/05 P, EU:C:2007:162, para 57), provides that the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms both of law and fact. In the present case, Intra-Presse had based its claims both upon Articles 8(1)(b) and 8(5) of the CTMR. The Board of Appeal only considered Article 8(1)(b), consequently dismissing Intra-Presse's claims as regards some goods in class 9 and all of the goods in classes 21 and 24. As the Board of Appeal did not consider Intra-Presse's plea alleging infringement of Article 8(5), it failed to fulfil its obligation to carry out a new, full examination of the merits of the oppositions under Article 64(1) of CTMR. Accordingly, the CJEU partially annulled the Board of Appeal decision to the extent that it dismissed Intra-Presse's claims against the registration of the opposed application in relation to some goods in class 9 and to all the goods in classes 21 and 24.

As for the GC judgment, the CJEU held that the GC erred to the extent that it had applied the same criteria to assess similarity under Article 8(1)(b) and Art 8(5) of the CTMR, inferring from the lack of similarity between the signs at issue for the purposes of Art 8(1)(b) that the application of Article 8(5) had had to be excluded.

In this regard, the CJEU made reference to its earlier case law according to which the degree of similarity required under Article 8(1)(b) CTMR, on the one hand, and Article 8(5) on the other, have to be assessed differently. Indeed, while application of Article 8(1)(b) is conditional upon a degree of similarity between the signs at stake leading to a likelihood of confusion, a lower degree of similarity is required to trigger the protection of trade marks with a reputation under Article 8(5), such similarity existing whenever the relevant public made a connection between those marks or established a link between them (Ferrero v OHMI, C-552/09 P, EU:C:2011:177). Consequently, the CJEU continued, claims based upon Article 8(5) could be manifestly dismissed only when no similarity at all existed between the marks at issue. As the GC found ‘Golden Balls’ and ‘Ballon d'or’ to be slightly similar on a conceptual level, it erred in law as it had ruled out the application of Article 8(5) without ascertaining whether that faint degree of conceptual similarity was nevertheless sufficient for the relevant public to establish a link between those marks.

Practical significance

This decision illustrates how European (and, even more often, national) courts have still not fully metabolised the true nature of the extended scope of protection granted to reputed trade marks (CTMR, Art 8(5)) and how it diverges from traditional protection based upon likelihood of confusion (CTMR, Art 8(1)(b)). In this case the CJEU stresses again that the different degrees of similarity required to trigger those two levels of protection lead to an obligation for the courts to carry out two separate assessments in case of actions involving claims under both Article 8(1)(b) and Article 8(5). That double assessment might be avoidable only in one case, when the comparison of the two signs under Article 8(1)(b) leads to the conclusion that no similarity at all there exists between them. By contrast, whenever even a slight degree of similarity is found, it is mandatory for the court to assess whether that low level of similarity, albeit not enough to cause likelihood of confusion, could however make the relevant public establish a link between the earlier reputed mark and the later sign. The lack of such double assessment may lead to the annulment of the decision in whole or part.