GEU had moeten onderzoeken of publiek verband legt tussen "GOLDEN BALLS" en "BALLON D'OR"

Het GEU had, gezien lage mate van conceptuele overeenstemming tussen woordmerk "GOLDEN BALLS" en oudere merk "BALLON D'OR", moeten onderzoeken of dit voldoende was voor het relevante publiek om een verband tussen de merken te leggen. BHIM had moeten oordelen over inbreuk op art. 8(5) GMeV.

MERKENRECHT

Uit het perscommuniqué: "In its judgments of 16 September 2013 , the General Court held that the trade mark BALLON  D’OR did not constitute a barrier to the registration of the mark GOLDEN BALLS as a Community  trade mark. According to the General Court, those signs had only a weak degree of conceptual  similarity and could therefore be registered even for identical or similar goods and services,  because there was no likelihood of confusion. [...]

In today’s judgment, the Court dismisses the appeals to the extent that they concern  registration of the mark GOLDEN BALLS for goods identical or similar to those covered by  the mark BALLON D’OR, because there is no likelihood of confusion.

On the other hand, the Court points out that, according to the General Court’s own findings, there  is a low degree of conceptual similarity between the two marks at issue. Accordingly, as regards  goods covered by the mark GOLDEN BALLS but different from those covered by the mark  BALLON D’OR, the General Court should have determined whether the low degree of similarity  was nevertheless sufficient, on account of the presence of other relevant assessment factors (such  as the reputation or recognition enjoyed by the earlier mark), for the public to make a link between  those two marks.

The Court holds that, by failing to assess those factors, the General Court erred in law. It follows  that the judgments of the General Court  must be set aside to the extent that they dismissed  Intra-Presse’s applications for annulment.

Choosing to rule Itself on the substance of the dispute, the Court finds that, since Intra-Presse’s  oppositions concern, inter alia, goods different from those for which Golden Balls seeks coverage,  OHIM should have assessed whether the mark BALLON D’OR had a reputation in the European  Union or in a Member State and whether registration of the new mark was liable to be detrimental  to that reputation because the public could assume that the two marks were linked. However,  OHIM did not carry out that assessment, which meant that it failed to carry out a full assessment of  the oppositions filed by Intra-Presse.

Consequently, the Court also annuls the decisions of OHIM to the extent that they dismissed  Intra-Presse’s oppositions against registration of the mark GOLDEN BALLS for goods that are  different from those covered by the mark BALLON D’OR."

Lees het arrest hier en lees hier het percommuniqué.