Published: September 21, 2022
Les Editions P. Amaury, which owns the BALLON D’OR mark, the most prestigious award in the world for individual footballers (soccer players), lost its trademark battle against Golden Balls Ltd before the EU General Court on July 6, 2022 (case T-478/21).
The case started in 2017 when Golden Balls Ltd filed an application with the EU Intellectual Property Office (EUIPO) to revoke EU trademark registration no. 004226148 for the BALLON D’OR mark on the basis of non-use. In 2020, the EUIPO’s Cancellation Division revoked the contested mark except for the services relating to sporting activities: the organization of sports competitions and awarding of trophies in Class 41. The EUIPO’s Board of Appeal confirmed the decision except for the goods “printed matter; books; magazines” in Class 16 in June 2021.
Les Editions P. Amaury appealed to the General Court to annul the contested decision ‘at least’ in relation to the Board of Appeal’s dismissal of its appeal in respect of the following services:
- Class 38: “broadcasting of television programmes,” “television broadcasting,” “satellite transmission,” “data transmission,” and “cable television broadcasting”;
- Class 41: “entertainment,” “television entertainment,” “publication of books, magazines and newspapers,” “production of television programmes,” “organisation of competitions (entertainment),” “production of shows” and “film production”.
In relation to the services in Class 38, despite the broadcasting of the “Ballon d’Or” event online on the www.lequipe.fr website run by L’Équipe 24/24 (a company in the same group of companies), there was no evidence filed to demonstrate that Les Editions P. Amaury provides such a service under the contested mark.
The second part concerned Class 41 services. The General Court dismissed Les Editions P. Amaury’s appeal for those services with the exception of “entertainment, television entertainment and organisation of competitions (entertainment).” According to the decision, the service of publication of books, magazines and newspapers and production of television programs must be provided or offered to third parties in the market.
The General Court did, however, accept Les Editions P. Amaury’s plea relating to entertainment services since the organization does provide a service intended to entertain the public in the form of a competition, including the award of a trophy, to reward a person’s sporting performance, and does not deprive it of its basic recreational and entertainment nature.
The decision demonstrates that an effort to prove trademark use can easily come up against the wall of establishing genuine use if relevant services are not offered or provided to third parties.
Kerem Gokmen
Read on INTA.org: https://www.inta.org/perspectives/law-practice/european-union-ballon-dor-owner-misses-goal-in-trademark-revocation-decision/
