A key principle of having a trade mark is that if you don’t use it, you’ll lose it. After registration, you are allowed a certain amount of time (5 years in the UK and EU) to bring your mark into use, after which it can be cancelled at the request of any third party if you are not able to prove genuine use. Proving use is never a trivial exercise and often goes awry. Even well-known trade marks (e.g. Big Mac) have been cancelled where the evidence filed by the proprietor has failed to meet the cumulative requirements – place, time, extent and nature – for proving use of the mark.
Two recent decisions of the EUIPO’s Cancellation Division show how a small London shop and a media giant, caught up in a prolonged battle over the scope of their rights, both ultimately fell victim to the use requirement.
Match Report
Back in the early 2000s, a West Hampstead couple who were drawn to the tongue-in-cheek name GOLDEN BALLS set up a small store under the name. The shop sold t-shirts and boxer shorts branded with the mark. The couple, Inez and Gus Bodur, established a UK company under the same name and by the end of 2003, had secured registrations for GOLDEN BALLS as a word mark in the UK and for the following logo version in the EU, both in respect of class 25 goods (clothing, footwear, headgear):
However, when they sought in 2007 to protect their logo mark in the EU for new categories of goods and services in classes 9, 28 and 41, this was opposed by Intra-Presse, the entity behind the famous BALLON D’OR award for best male footballer of the year, which roughly translates as “Golden Ball”. Their opposition was based on an EU registration for the word mark BALLON D’OR, which had just been granted in 2006 in respect of a wide range of goods and services in classes 9, 14, 16, 18, 25, 28, 38 and 41, and on the reputation accrued by the mark since the trophy was first awarded in 1956.
An epic battle ensued, spanning more than a decade and involving two visits to the EUIPO’s Opposition Division, four to the Boards of Appeal, two to the General Court and one to the CJEU, generating along the way a landmark judgement on the role of translation in conceptual similarity. On 5 August 2019, it was ultimately decided that the mark could proceed to registration in classes 9, 28 and 41, but only for certain goods and services deemed to be sufficiently far removed from the field of sport in which BALLON D’OR has a reputation. (The reputation element was important, since the General Court had already determined that there was no real likelihood of confusion between the marks, given that they were visually and aurally dissimilar and only slightly similar on a conceptual level.)
This, however, was not the end of the matter, as the EUIPO’s Cancellation Division was yet to rule on the requests made by the parties to revoke each other’s registrations for non-use (for GOLDEN BALLS, the request concerned the earlier class 25 registration). Those decisions were issued on 9 March 2020 and 24 April 2020, respectively cancelling the GOLDEN BALLS class 25 registration entirely and the BALLON D’OR registration for all goods and services except for the organising of sports competitions and the awarding of trophies.
Red Card: The Cancellation of GOLDEN BALLS
In its 9 March 2020 decision, the Division held that only token use had been made of the mark in class 25 and there were no justifications for its non-use.
The evidence put forward by Golden Balls Limited was found to show only three actual sales of clothing under the mark for the relevant period. Although there is no requirement for a minimum quantity of sales, in the context of the everyday consumer goods covered by class 25, the low figures in this case could not show more than token use. Much of the remaining evidence was undated and did not clearly relate to the trade mark and/or the relevant goods. For example, the company’s balance sheet could show its income but not that it derived solely from the trade mark and goods in question. An affidavit was provided but was not corroborated by independent materials.
The owners also cited their financial difficulties and reduced business opportunities resulting from the ongoing dispute with Intra-Presse. Since the dispute concerned use of their logo mark in other classes, this was not found to be a valid reason for non-use of the word mark GOLDEN BALLS in class 25. The Division also confirmed that the mere threat of legal action or cancellation against a registered mark does not exempt the holder from his obligation to use it. Non-use can only be justified by circumstances beyond the control and influence of the owner. Finally, a single press article was found insufficient to show detriment to the business activities of Golden Balls Limited or its licensee.
Yellow Card: The Partial Cancellation of BALLON D’OR
By the time of the cancellation action, ownership of the BALLON D’OR mark had transferred from Intra-Presse to a related entity, Les Editions P. Amaury (“EPA”). The evidence put forward by EPA in this case, although extensive, did not prove genuine use of the mark for any goods and services beyond those for which it had been determined to have a reputation in the above opposition proceedings.
Mere assertions by the owner that its mark was being used in classes 9, 18, 25 and 28, for games, footwear and “ancillary merchandising” items, were all dismissed as being uncorroborated by the evidence.
The Cancellation Division acknowledged that the evidence suggested use of the mark in relation to trophies and articles made of precious metals. However, neither of these terms were included in the class 14 specification and the Division rejected EPA’s argument that its use was encompassed by their first class 14 term “Precious metals and their alloys other than for dental purposes”, since that term specifically relates to raw materials used in the manufacture of goods. This illustrates, as ever, the importance since the celebrated judgment in IP Translator of ensuring that core goods and services are actually listed in the specification, and not merely relying on the class headings as a “catch-all”.
The Division found that books entitled BALLON D’OR and related press articles did not constitute anything beyond descriptive use in class 16 and did not show an attempt to break into the relevant market; nor could they support a claim to publication services in class 41, since the proprietor had not itself offered such services to third parties.
Likewise, authorising third parties to broadcast the award ceremony did not constitute genuine use of the mark by EPA in class 38 or for any class 41 services relating to radio and television entertainment.
Finally, use of the mark for organising award ceremonies did not extend to the broader terms “education, providing of training, entertainment or cultural activities” and could only justify use for a subcategory within the term “sporting activities”.
The Final Whistle?
Each party has two months to appeal their cancellation decision, so there could still be more proceedings to come. There are signs however of a possible truce having been reached, as both parties made new applications for EUTMs in 2019 which went on to be registered without objection. Thus, Golden Balls Limited now have a registration for the GOLDEN BALLS word mark for a slightly narrower specification in classes 9, 28 and 41, under limitation that none of the goods and services relate to sports or have a sporting theme, and EPA have a registration for BALLON D’OR in the logo form shown below, for a somewhat pared-down list of goods and services over 12 classes.
Since there are no obvious grounds for either of these new registrations to be cancelled, perhaps they will finally give the parties both the protection and space they need in order to exploit their respective ‘golden balls’.
Avoiding Own Goals: A Spectator’s Tips
This dispute may serve as a reminder to:
1) consider conceptually similar marks in your pre-filing searches (free search tools tend only to cover visual and aural similarities);
2) ensure the core goods and services are specified and consider narrowing down your registration and/or use where necessary;
3) use the generous cooling-off periods and other negotiation tools offered by the UKIPO and EUIPO;
4) revisit negotiations and alternative options at each new stage of contentious proceedings, bearing in mind that even the most extreme concession might yield a better result than years of legal action; and
5) keep accurate and regular records which together can show, if needed, an overall picture of:
i) where and when your mark has been used and for which of the registered goods and/or services,
ii) the extent and duration of that use, and
iii) how the use distinguishes your goods and services from those offered by your competitors.
