This case forms part of a long running trade mark dispute between Golden Balls Ltd (“GBL”) and Les Éditions P. Amaury (“Amaury”) and their respective trade marks: GOLDEN BALLS and BALLON D’OR.
Although Amaury was only partially successful, the case is significant in that it highlights the convergence between entertainment and broadcasting services but also the distinctions between the two (broadcaster vs. content creator), as well as use in respect of services more generally.
In 2017, GBL applied to revoke Amaury’s BALLON D’OR mark in classes 14 (precious metals, jewellery), 16 (paper goods, printed matter), 38 (telecommunications) and 41 (Education, training, entertainment, sporting and cultural activities) on the basis of non-use.
The mark was initially revoked in its entirety with the exception of ‘sporting activities, namely organisation of sports competitions and awarding of trophies’ in class 41. However, on appeal before the Board of Appeal, it was held that Amaury had shown use of ‘printed matter; books, magazines’ in class 16 but the remainder of the appeal in connection with the other goods and services was dismissed.
Amaury appealed this decision before the General Court (“GC”).
Amaury indicated that it should have been found to have used the BALLON D’OR mark on the broader class 38 and 41 terms:
Amaury failed to overturn the decision in respect of the class 38 services but was partially successful in respect of the class 41 services, regaining protection for some of its broader entertainment terms.
The GC referred to the NICE classification guidance and concluded that class 38 covers what are essentially telecommunication services. In order to prove genuine use, a mark must be used on a service that allows one person to communicate with another. Although Amaury claimed numerous documents showed use of the contested mark in connection with the broadcasting of its annual ‘Ballon d’Or’ event both on television and through the internet, the GC held that it was quite clear that the mark was not used in respect of broadcasting services, but on the content of the broadcast. The evidence did not show that Amaury enabled the broadcasting services but instead showed that these were provided by third parties.
For the class 41 claim, the GC found that Amaury’s evidence showing use in relation to organising an annual event to reward the best professional footballer of the season with a view to it being broadcast on television and on the Internet did constitute use in respect of entertainment. It was quite clear that the main objective of organising an award ceremony like this was for entertainment purposes and just because the competition concerned the field of sport, the aim can still be for entertainment.
As such, the GC held that Amaury could keep the terms ‘entertainment’, ‘television entertainment’ and ‘organisation of competitions (entertainment)’. Nonetheless, the GC held that it was clear that Amaury were not offering production or publishing services to third parties so there was no use for the remainder of the class 41 terms.
It is clear from this case that for there to be genuine use, services must be offered on the market and as such, brand owners need to be aware of and appreciate the scope of their current and future use. Whilst broad filings will continue to be of benefit, a brand owner will need to accept that they may not be able to support use for every single term covered.
Further, given the convergence between entertainment and broadcasting and the Internet-related evolution of these types of services (streaming), it was interesting to note that the GC held that a trade mark used as a domain name to provide access to television content on the Internet could constitute a broadcasting service. Whilst broadcasting appears to remain in the realm of traditional broadcasters such as Channel4 and the BBC, sports entities who wish to cover broadcasting could consider following the Premier League’s example of using premierleague.com to show match highlights.