Sommaire
Introduction
The dispute between Éditions P. Amaury, holders of the iconic “BALLON D’OR” trademark, and the British company Golden Balls Ltd, applicant for the “GOLDEN BALLS” trademark, sharply illustrates the complexity of assessing the likelihood of confusion within the European Union. By confronting two signs that differ linguistically yet are conceptually close, the various rulings highlight the limits of protection afforded to a well-known trademark when its intrinsic distinctiveness remains weak.
The origin of the dispute: confusion or linguistic coincidence?
The dispute began when Golden Balls Ltd sought to register the trademark “GOLDEN BALLS” as an EU trademark for goods and services partially identical or similar to those covered by the earlier trademark “BALLON D’OR”.
Les Éditions P. Amaury opposed the registration on two main grounds:
- Likelihood of confusion, as provided under Article 8(1)(b) of the EU Trademark Regulation (EUTMR) of 14 June 2017.
- Detriment to fame, as provided under Article 8(5) of the same Regulation.
The General Court’s 2013 rulings: dissimilarity prevails
In its initial judgments in 2013 (T-437/11 and T-448/11), ), the EU General Court ruled in favour of Golden Balls Ltd, an outcome that initially surprised many intellectual property specialists. The judges found that the signs were visually and phonetically dissimilar. The signs differed notably in their language. Even if a conceptual similarity could be identified, it was deemed insufficient to create a likelihood of confusion in the mind of the average EU consumer. Consequently, the application for “GOLDEN BALLS” was provisionally accepted.
The ECJ’s historic correction in 2014: fame must be assessed
The French publisher appealed. In 2014, the Court of Justice of the European Union (ECJ) handed down a landmark decision, overturning the 2013 judgments of the General Court. The ECJ held that the General Court had failed to adequately examine the ground based on damage to fame, thereby committing an error of law.
The ECJ further clarified that even a low degree of similarity between two signs may be sufficient to establish a link in the mind of the relevant public, provided that the earlier trademark enjoys a high degree of distinctiveness and fame.
Following this decision, the case underwent a long and complex procedural journey, marked by several intermediate decisions issued by the EUIPO Opposition Division and Boards of Appeal, including a decision in 2016 (R 1962/2015‑1), before being referred back to the General Court.
In 2018, the General Court handed down its judgment in a confirming the fame of the “BALLON D’OR” trademark while adopting a nuanced stance on whether a sufficiently close link existed between the signs to justify a finding of unfair advantage.
Specifically, the Court clarified that Article 8(5) of Regulation (EU) 2017/1001 protects a well-known trademark only if the public establishes a link between the signs and if the use of the contested sign takes unfair advantage of or is detrimental to the fame of the earlier trademark. The “GOLDEN BALLS” trademark thus remained valid for classes of goods and services considered too far removed from the sporting field to give rise to unfair advantage.
The unexpected turning point: partial revocation of the “BALLON D’OR” trademark for lack of genuine use
A few years later, Golden Balls Ltd initiated revocation proceedings against the BALLON D’OR mark for non-use, under Article 58(1)(a) EUTMR.
In its judgment of July 2022 ((T-478/21), the General Court issued a nuanced decision redefining the scope of protection of the “BALLON D’OR” trademark.
While the Court accepted that the “organisation of sporting competitions and award ceremonies” constituted sufficient proof of use for the broader category of “entertainment services”, it upheld partial revocation for numerous other goods and services (such as printed matter, films, and telecommunications).
The evidence provided failed to demonstrate use of the trademark for each specific subcategory claimed during the preceding five-year period.
To learn more about assessing genuine use of a trademark for all classes of goods and services for which it is registered, please see our previously published article.
Proving genuine use of a trademark: evidence and best practices
To establish genuine use of a trademark, various forms of evidence may be submitted, such as:
- Invoices, purchase orders, or delivery note;
- Catalogues, brochures, and packaging displaying the trademark;
- Print and digital advertisements;
- Dated and archived website screenshots;
- Market studies and opinion surveys demonstrating the fame
- Contracts or licence agreements with third parties using the trademark.
Each item must be dated and correspond precisely to the goods and services covered by the registration. Use limited to only part of the designated goods or services may result in partial revocation.
Moreover, use must be uninterrupted or duly justified if interrupted. Sporadic or symbolic use is insufficient; the evidence must show an actual commercial presence, not merely internal use.
Conclusion
The Ballon d’Or vs Golden Ball dispute serves as a crucial reminder for trademark owners: fame is a powerful asset in trademark litigation, but it does not exempt the owner from the fundamental duty to prove genuine use for all registered goods and services.
A lack of proof, even for seemingly secondary classes, may result in partial revocation, thereby reducing the overall scope of trademark protection.
It is therefore recommended to engage an IP law firm or trademark attorney both upstream, to craft a precise and relevant specification of goods and services aligned with actual or intended use, and downstream, to evaluate risk, identify relevant evidence, and implement a robust use strategy that preserves the integrity of trademark rights.
Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Nathalie Dreyfus with the support of the entire Dreyfus team
Q&A
1.What is revocation for non-use of a trademark?
Under Article 58(1)(a) EUTMR, a registered trademark may be revoked if its proprietor fails to prove genuine use of the trademark for the goods and services claimed during an uninterrupted period of five years. Revocation may be partial if use is shown only for certain goods or services.
2.What is the key takeaway from the Ballon d’Or / Golden Balls decision for owners of well-known trademarks?
The main lesson is to meticulously document genuine use for each product and service designated in the registration, particularly during the first five years following registration, to avoid subsequent revocation.
Can use in a single EU Member State preserve an EU trademark?
Ye, if that use produces commercial effects within the internal market, taking into account the economic context
4.What happens after revocation for non-use?
Once revoked, the trademark is deemed never to have produced effects from the date set by the decision. It retroactively loses protection for the relevant goods and services. The proprietor can no longer rely on exclusive rights, oppose similar trademarks, or prevent third-party use. The trademark may then be re-registered by another party, provided this does not create a likelihood of confusion with still-valid prior rights.
5.What practical steps help prevent revocation and preserve a trademark’s evidentiary strength?
It is essential to:
- actively monitor the trademark’s use and archive evidence (invoices, ads, publications, screenshots, etc.);
- periodically renew communication campaigns linked to the trademark;
- audit the portfolio to detect inactive registrations;
- restrict filings to goods and services genuinely used, thus avoiding vulnerabilities in non-use challenges.
This publication is intended to provide general guidance to the public and to highlight certain issues. It is not designed to apply to specific situations, nor does it constitute legal advice.