David vs Goliath
Six Year Battle for British SME Ends in Success as GOLDEN BALLS is Officially Registered as a Community Trade Mark
Inez and Gus are a husband and wife team with two young children, who went into business at the start of the millennium selling t-shirts. Gus is a keen footballer, and so, with tongues in cheeks, the couple decided to use his nickname GOLDEN BALLS as their brand. Their hard work paid off, and soon celebrities were spotted in their clothing, and they were accepting compliments from the editor of Vogue.
After investing most of a decade into their business, in 2007 Inez and Gus scored a lucrative deal, licensing the brand to Jasper Carrott’s gameshow of the same name, along with worldwide merchandising rights. However, just two months later they were faced with legal action from one of the largest media companies in Europe, Intra Presse (who organise the European Footballer of the Year award), and they have been fighting ever since for the right to use their brand name GOLDEN BALLS.
At issue was the question of whether GOLDEN BALLS was too similar to BALLON D’OR, a trade mark owned by Intra Presse. Although Gus and Inez had successfully registered their trade mark in the UK as far back as 2001, in light of their licensing deal, they needed greater protection. So they applied to register GOLDEN BALLS for use with a broader range of goods and services, throughout Europe.
Intra Presse opposed the GOLDEN BALLS application, arguing that it was too similar as when translated from French to English, ‘ballon d’or’ means ‘golden ball’. The Office for Harmonisation in the Internal Market (OHIM), which is responsible for the examination and registration of European Community Trade Marks, rejected the opposition, but Intra Presse appealed successfully on a number of critical issues.
This was a colossal blow to Inez and Gus, whose legal costs alone stretched to over £100,000, and led to the closure of their shop in Hampstead. The Bodurs’ plight became national news. That’s when with the support of Azrights Solicitors, Michael Edenborough QC, and the backing of blogmeister Jeremy Philips of the IPKat, the case was appealed to the European Court of Justice.
This week, the court reversed the appeal decision, granting the couple the right to register GOLDEN BALLS as an EU Trade Mark, and we couldn’t be more pleased. Still, despite their success, the battle has taken its toll on their business and their family. Inez and Gus wouldn’t wish a similar experience on anyone. Numerous opportunities have passed them by since the dispute began, and they find themselves starting from scratch. Nevertheless, we are pleased they have been vindicated, and we have high hopes for their future.
Shireen Smith LLB LLM , from Azrights Solicitors said:
“We’re delighted that the ECJ handed down its judgment, and in a thoughtful, and reasoned decision found that the weak conceptual similarity between the two marks, which also requires a prior translation, was not likely to confuse consumers. It has been gratifying to witness the support shown for Inez and Gus by the legal community, including from blogmeister Jeremy Phillips and Mark Anderson of Anderson Law LLP. The opportunity for my firm, Azrights to provide pro-bono work with Michael Edenborough on this case , has been extremely rewarding, and we are overjoyed that this hard work has paid off.”
See over for Editor’s Notes
Editor’s Notes
The link to the judgment handed down by the ECJ can be found at the following link http://curia.europa.eu/juris/document/document.jsf?text=&docid=141415&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=6958518 <http://curia.europa.eu/juris/document/document.jsf?text=&docid=141415&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=6958518>
About Azrights Solicitors
Azrights is an award winning intellectual property law firm. It focuses on online business, and the legal aspects of branding. Azrights was set up by Shireen Smith with a very simple aim: to widen access to intellectual property (IP) and business advice. As well as working with entrepreneurs, and SMEs, Azrights supports business advisers, marketing, branding and other agencies who create IP for companies or who provide them with strategic business advice.
For more information, visit www.azrights.com
About Golden Balls Limited
Golden Balls started trading in 2002 during World Cup 2002 Japan. Gwyneth Paltrow was seen in the press wearing their t-shirt and various celebrities have been seen in their clothing. They specialise in clothing for Ladies, Men and Children and work with top manufacturers to supply the best quality merchandise. Their aim is to help everyone to be proud to show their Golden Balls.
For more information, visit www.goldenballs.tv
For press enquiries please contact Jenna Gould on 0845 094 9658 or email [email protected]
