[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　2007 years, Golden Balls Limited The company applied for the registration of two Community word trademarks "GOLDEN BALLS" (It is now the EU trademark) , One of them specifies No 9, 28 and 41 class, Another specifies No 16, 21 and 24 class. At first, "GOLDEN BALLS" Trademarks are only used on sportswear related goods. however, A license agreement signed later, Licensing the trademark for use in a game variety show broadcast on British television.

　　French company Intra-Presse Objection to both of the above applications. The company is the organizer of the Golden Globes, The football player of the year is awarded. The prior trademark quoted in the objection application is the registered trademark of the Community "BALLON D' OR" , Designated control 9, 14, 16, 18, 25, 28, 38 and 41 class.

　　Both petitions were denied, The disputed trademark is approved for registration. Intra-Presse Objection to the ruling, Lodge an appeal, The latter part of the appeal was upheld. Appellate board finding, The meaning of the disputed mark is similar to that of the quoted mark, And the designated goods and services in the same category are basically the same, Only certain items in certain categories are different.

　　Golden Balls To the EU General Court of Justice (General Court) appeal. General court decision (Case number: T-437/11, T-448/11) , There is no risk of confusion or misidentification of the disputed trademark, Registration shall therefore be granted. In the judgment, The court stated that, Trademarks in dispute are less similar in meaning, Because, among other things, Need to first "GOLDEN BALLS" After the translation of the expression, Be able to see and "BALLON D' OR" Compositional similarity. Intra-Presse He then appealed again.

　　 [conclusion]

　　2014 years 11 month 20 day, The European Court of Justice ruled on the merger of two cases. The judgment said, Due to the dispute trademark designated goods items are not the same, Intra-Presse In accordance with the "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 8 (5) Article claim, Quotation mark "BALLON D' OR" Have a famous reputation, However, the relevant rulings and judgments in this case have not analyzed this claim, So there is a legal error. In view of this, The European Court of Justice quashed the general court's decision, And the findings of the Appeal Board, Sending the case back to the Commission for Internal Market Coordination (OHIM, Now known as the European Union Intellectual Property Office) re-examine, It shall be clear whether the prior trademark has achieved a well-known reputation within the Community, If the conclusion is yes, It is necessary to further determine whether there is a risk of confusion and misidentification.

　　 [comment]

　　basis "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 8 (5) article, A mark identical with or similar to a well-known trademark, Apply for registration on different goods or services, May take improper advantage of the famous reputation of an earlier trademark, unregistered. Therefore, The well-known reputation of the established trademark is very important to settle the dispute in this case.

　　As for the similarity analysis between the disputed trademarks, obvious, The general court held that, From the perspective of French consumers, Consumers don't think "GOLDEN BALLS" with "BALLON D' OR" There is a direct link between the football awards. however, Although it may not constitute "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 8 (1) (b) prescribed "Risk of confusion" , But it is still possible to constitute the No 8 (5) prescribed "There are specific connections and associations" relationship.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights