August 15, 2022
The French company Les Éditions P Amaury, which holds the rights relating to the “Ballon d’or” (an award given to the best football player of the year), owns the EU trade mark for the word sign BALLON D’OR in respect of printed matter, as well as the organisation of sports competitions and trophy awards, entertainment services, the broadcasting or production of TV programmes, the production of shows or films, and the publication of books, magazines or newspapers.
In 2017, the UK company Golden Balls Ltd applied for revocation of the BALLON D’OR mark on grounds of non-use under Article 58(1) of the Trade Mark Regulation (2017/1001/EU). The EUIPO Cancellation Division revoked the mark for all goods and services, except “organisation of sports competitions and awarding of trophies” in Class 41.
Les Éditions appealed and the Board of Appeal upheld the appeal in part, namely in respect of “printed matter; books, magazines” in Class 16, but dismissed the reminder of the appeal.
Les Éditions appealed to the General Court in respect of the remaining services in Class 38 covering “broadcasting of television programmes, television broadcasting, satellite transmission, data transmission and cable television broadcasting” and in Class 41 covering “entertainment, television entertainment, publication of books, magazines and newspapers, production of television programmes, organisation of competitions (entertainment), production of shows and film production”.
The GC found that the broadcast of TV programmes comes under Class 38 “telecommunications services”, which according to the Explanatory Note to the 2001 eighth edition of the Nice Classification (in force at the date of application), must allow “at least one person to communicate with another by a sensory means”. Les Éditions had not established that it maintained a telecommunications network that could be used by others. Therefore, the BoA had not erred, and the mark remained revoked in respect of these services.
As for “entertainment, television entertainment and organisation of competitions (entertainment)” in Class 41, Les Éditions said that it organised a yearly event to reward the best professional footballer of the season. It said that it had made significant financial investment in the organisation and production of the “Ballon d’Or” competition with a view to its being broadcast on TV and on the internet. It also provided details of the sums received by way of royalties for broadcasting the competition on TV within the EU, press articles showing that the competition received media coverage and television and internet viewing figures.
The BoA had relied on the usual meaning of the term “entertainment” in the Collins dictionary, which is defined as “performances of plays and films, and activities such as reading and watching television, that give people pleasure”.
The GC noted that, according to the Explanatory Note to the eighth edition of the Nice Classification, Class 41 includes “services having the basic aim of the entertainment, amusement or recreation of people”.
The GC held that the main objective of organising an award ceremony, such as the “Ballon d’Or”, clearly constituted entertainment of the public, whether in the venue where the ceremony is held, on TV or on the internet. The event was not limited to the award of a trophy: throughout the ceremony, speeches are given by personalities from the football world and video footage of remarkable football moments is shown. It was also true that Les Éditions invested considerable sums in the organisation of the competition and in recording it for broadcast. In the GC’s view, such a show clearly fell within the scope of “entertainment”.
Accordingly, the GC rejected the BoA’s argument that because the event was in the field of sport and because its main purpose was to reward a person’s football performance, the basic aim of the competition could not be classed as the “entertainment, amusement or recreation of people”. The appeal was upheld in this regard.
As for “production of television programmes, production of shows and film production” in Class 41, the GC noted that according to case law, genuine use of a mark requires that it be used to create or preserve market outlets and that it be used publicly and outwardly. Further, services for which trade mark protection is sought are generally offered to third parties and supplied for economic consideration. Services in the areas of TV and film production are directed at professionals in the audiovisual sector, such as writers and film directors.
The evidence did not show that Les Éditions provided or offered such production services under the BALLON D’OR mark. Putting on the “Ballon d’Or” event with a view to its being broadcast did not mean that genuine use of the mark had been made in connection with “production services”. The mark was not being offered to third parties in the market for those services in order to create outlets in the context of the public and outward use of the mark. Rather, producing the event was an act of exploitation of the service offered by Les Éditions, which consisted of organising the competition.
The BoA had therefore been right to find that Les Éditions produced the show for itself, in that it did not provide a production service for third parties under the mark and genuine use had not been established.
As for “publication of books, magazines and newspapers”, the GC noted that this did not concern the content of the publication, but the production and promotion of any book or content in order to create or preserve market outlets. The recipients of such services are the authors or agents who want their work to be published.
Les Éditions relied on the fact that it was the author of 60 ans de Ballon d’or and 50 ans de Ballon d’or and that it had collaborated with Les Éditions Solar to have those books published. It also adduced evidence of special editions of the magazine France Football dedicated to the “Ballon d’Or” competition. However, it produced no evidence to show that it had provided or offered publication services to third parties on the market.
Accordingly, the GC found that Les Éditions had not proved genuine use in this area and the BoA had been right to so find. This part of the appeal was rejected.
Overall, the appeal was rejected, except for “entertainment” services in Class 41. The BoA’s decision in this regard was overturned. (Case T-478/21 Les Éditions P Amaury v EUIPO EU:T:2022:419 (6 July 2022) — to read the judgment in full, click here).