Entrepreneurs claim victory in Ballon d'Or trademark dispute
A UK couple has won the right to use the trademark ‘Golden Balls’ for their company following a six-year dispute with the organisers of a prestigious football award.
Businessman Gus Bodur and his wife Inez have been locked in battle over their Golden Balls sportswear shop after the FIFA Ballon d’Or award (French for Ball of Gold) claimed the name infringed on its trademark.
The prize has been handed out annually to the world’s best footballer since 2010 after two separate awards, the Ballon d'Or, organised by French firm Intra-presse and the FIFA World Player of the Year award merged.
It has been won by Barcelona’s Lionel Messi every year since the two merged.
The couple, from London, had been selling sportswear at their shop since 2001 after obtaining the trademark Golden Balls.
In 2007, they licensed the name to entertainment company Endemol to use for a television game show of the same name.
However, they were then contacted by Intra-presse, which accused them of trademark infringement.
Despite a failed notice of opposition at the Office for Harmonization in the Internal Market in 2010, a subsequent appeal granted some rights back to Intra-Presse, which had merged with FIFA that year.
The money spent fighting the case forced the closure of the couple's shop and the collapse of a lucrative licensing deal with the TV show.
But they vowed to take the case to the Court of Justice for the European Union (CJEU) and on September 16, the court ruled in their favour.
“The signs at issue do not constitute a transliteration of each other or an exact translation of each other,” the court wrote.
It added: “The English word 'balls' is in the plural and conveys the idea of several balls, whereas the French word ‘ballon’ is in the singular and conveys the idea of a single ball.
“Next, the French term 'ballon', which could also mean 'balloon', is not exactly equivalent to the English word 'ball.' Finally, the earlier mark Ballon D’or is translated into English by 'balloon of gold' or 'ball of gold' and not 'golden ball'.”
“We have been waiting so long for this day,” Mrs Bodur, told her local newspaper.
“We felt so relieved that the judges were saying what we have been saying since day one - that there was no similarity.”
According to Chris Mcleod, first vice president of the Institute of Trademark Attorneys, the right decision was made.
“Once you have got away from any visual or phonetic similarity you are left with conceptual similarity. In the first instance, it was said the two are not conceptually similar but the board of appeals ruled they were pretty much identical. The CJEU has disagreed with that.
“When you look at the translation it’s fairly clear there is not much similarity. The fact that Ballon Do’r when translated is singular means you are quite a distance away.”
Mcleod, who is also director of trademarks at Squire Sanders LLP, in London, added that, although further action from Intra-Presse could not be ruled out, it was unlikely.
“You can always conjure up some basis to try and knock someone else’s trademark out. They could claim it has been applied for in bad faith but that is a fairly arduous thing to prove.
“I think it may be the case that they [Intra-presse] will just walk away now.”
