The BALLON D’OR case, or why the specification must accurately reflect the goods and services offered

This article first appeared on WTR Daily, part of World Trademark Review, in July 2022. For further information, please go to www.worldtrademarkreview.com.

EUROPEAN UNION

Legal updates: case law analysis and intelligence

  • The EUIPO partially revoked the mark BALLON D’OR on the ground of non-use
  • The court found that, insofar as the mark owner did not demonstrate that it maintains a telecommunications network thatcan be used by others, genuine use could not be established for the Class 38 services
  • However, since the mark was used to designate a prize-giving ceremony, use was genuine for entertainment services inClass 41

On 6 July 2022 the General Court issued its decision in Les Éditions P Amaury v European Union Intellectual Property Office(EUIPO) (Case T-478/21) concerning the revocation of the EU word mark BALLON D’OR. 

Background

On 24 December 2004 the applicant, Les Éditions P Amaury, filed a trademark application for BALLON D’OR in Classes 14, 16,38 and 41. On 26 September 2017 Golden Balls Ltd filed an application for revocation of this trademark on the ground of non-use.

The Cancellation Division of the EUIPO revoked the mark for all the goods and services in respect of which the mark wasregistered, with the exception of “sporting activities, namely the organisation of sports competitions and awarding of trophies”in Class 41.

The applicant appealed. The Board of Appeal of the EUIPO upheld the appeal in part, confirming the genuine use of the markalso for “printing matter; books, magazines” in Class 16. A further appeal was filed in respect of certain services in Classes 38and 41.

Decision

The General Court analysed each of the services concerned by the appeal to determine whether use was genuine.

 Class 38: « Broadcasting of television programmes; television broadcasting; satellite transmission; data transmission; cabletelevision broadcasting »

According to the applicant, insofar as the trademark BALLON D’OR was used for the broadcasting of the competition of thesame name in all the EU member states, on television and on the Internet, genuine use was demonstrated for these services.

The General Court recalled that services in Class 38 essentially comprise services which enable at least one third party tocommunicate with another, as well as data broadcasting and transmission services. Thus, insofar as the applicant did notdemonstrate that it maintains a telecommunications network that can be used by third parties, the genuine use of the mark forthese services could not be established.

Further, it is not sufficient, in order to demonstrate genuine use for these services, that an undertaking is responsible for thecontent of its television channels and that its trademark appears on its channel. It is necessary to show that it actually providesservices enabling it to broadcast the channels in question by its own means. The evidence showed that only third-partycompanies were broadcasting the ‘Ballon d’Or’ competition, so genuine use of the mark for these services was rejected.

 Class 41: “entertainment; television entertainment; organisation and competition (entertainment)”

According to the applicant, since the trademark BALLON D’OR was used to designate a prize-giving ceremony, use must beconsidered genuine for entertainment services.

The General Court considered the usual definition of the term ‘entertainment’ and confirmed that a ceremony such as the onepresented under the trademark BALLON D’OR was indeed entertainment. Thus, genuine use was recognised for these services,and the decision of the Board of Appeal was rejected as regards the latter.

 Class 41: « publication of books, magazines and newspapers; production of television programmes; production of shows; filmproduction »

According to the applicant, the fact that it invests and takes financial risks in the production of television programmes bearingthe contested mark was sufficient to demonstrate the genuine use of the mark for these services. Similarly, it stated that itpublishes a number of books and magazines, which was admitted by the Board of Appeal, insofar as it recognised the genuineuse of the mark BALLON D’OR for « printing matter; books, magazines » in Class 16.

However, the General Court recalled that the services concerned must be provided to third parties, whether in exchange forremuneration or not. Insofar as the applicant did not show that it offered these services on the market as a service providerunder the contested mark, but merely used those services on its own account, genuine use had not been shown for thoseservices. The revocation of the trademark for these services was therefore confirmed.

Comment

This decision demonstrates the extent to which the European institutions, led by the EUIPO, are becoming increasinglydemanding in terms of the analysis of proof of use and, above all, the definition of the various goods and services covered.Therefore, trademark professionals must advise their clients to protect their trademarks for the goods and services for which themark will actually be used.

Moreover, one may wonder whether the implementation of a licence or co-ownership with third parties could have saved theBALLON D’OR trademark for the services that are not effectively offered by the applicant under this mark.

Finally, this decision is noteworthy in that it brings the focus on trademarks used in the context of a periodic event – owners ofsuch trademarks should be encouraged to be more vigilant in terms of management and dissemination of their trademarks, andin terms of the collection of evidence of use.

 

Mélanie Villanova

Author | Intellectual property lawyer mvillanova@inlex.com – INLEX IP Expertise