Judgment of the General Court (Third Chamber) of 17 October 2018 –

Golden Balls v EUIPO — Les Éditions P. Amaury (GOLDEN BALLS)

(Case T‑8/17)

(EU trade mark — Opposition proceedings — Application for EU word mark GOLDEN BALLS — Earlier EU word mark BALLON D’OR — Relative ground for refusal — Unfair advantage taken of the distinctive character or repute of the earlier mark — Article 8(5) of Regulation (EC) No 40/94 (now Article 8(5) of Regulation (EU) 2017/1001))

1. EU trade mark — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 207/2009, Art. 75, second sentence) (see paras 58, 66)

2. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Relevant date for examining a relative ground for refusal — Date of lodging the application for registration (Council Regulation No 207/2009, Art. 8(5)) (see paras 74-77)

3. EU trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria (Council Regulation No 207/2009) (see para. 79)

4. Actions for annulment — Admissibility criteria — Interest in bringing proceedings — To be considered of the Court’s own motion (Art. 263 TFEU) (see para. 80)

5. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark (Council Regulation No 40/94, Art. 8(5)) (see paras 86, 104)

6. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Word marks GOLDEN BALLS and BALLON D’OR (Council Regulation No 40/94, Art. 8(5)) (see paras 92, 103, 110, 129, 137, 143, 148-152)

7. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Reputation of the mark in the Member State or the European Union — Concept — Criteria for assessment (Council Regulation No 40/94, art. 8(5)) (see para. 93)

8. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Criteria for assessment (Council Regulation No 40/94, Art. 8(5)) (see paras 106, 107)

9. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Attention level of the public (Council Regulation No 40/94, Art. 8(5)) (see para. 108)

10. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks (Council Regulation No 40/94, Art. 8(5)) (see paras 111, 112)

11. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 40/94, Art. 8(5)) (see para. 140)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 30 September 2016 (Case R 1962/2015-1), relating to opposition proceedings between Intra-Presse and Ms Inez Samarawira.

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 September 2016 (Case R 1962/2015-1) in so far as it upheld the opposition with regard to ‘Slot machines, for use in combination with a screen, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; photographic, cinematographic and optical apparatus and instruments, recording discs, data processing equipment and computers, computer hardware, mouse-mats, mobile phone accessories, sunglasses’ in Class 9, ‘decorations for Christmas trees’ in Class 28 and ‘theatre production such as shows and theatrical performances, production of musicals, organisation of music events/concerts’ in Class 41;

2. Dismisses the action as to the remainder;