The manager of a company called Vizion’Air operates an e-commerce website specializing in model making and drones under the trade name Droneshop. It filed the domain name www.ladroneshop.com in 2012. As of 2011, another company, Minigroup, is the owner of the domain names www.droneshop.fr and www.droneshop.com.
Following the filing of the French trademark “DroneShop” in 2013 and of a French semi-figurative trademark, Vizion’Air brought an action against Minigroup, on the grounds of unfair competition. Vizion’Air invokes the wrongful acts of Minigroup and requests the cancellation of the registration of the two contentious trademarks. To do so, Vizion’Air needed to etablish that a risk of confusion exists between the Minigroup trademarks and the domain name of the applicant. However, prior to the above, Vizion’Air needed to establish the distinctive character of the former signs.
The landmark decision of “ Baby Dry” of the Court of Justice of the European Communities, 20 September 2001 establishes that the combination of several descriptive terms may acquire distinctiveness, provided that the sign presents an exclusively arbitrary construction.
Indeed, the European Court firstly highlights the elements of the disputed sign. The latter is composed exclusively of descriptive elements for the English-speaking consumer.
However, the Court also indicates that a sign which bears elements that allow one to designate the actual product , service or one if its characteristics, must be refused registration. Article 7 §1, c) of Regulation No 40/94 on the Community trade mark however, sets out that such a refusal for registration is not valid “unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics. (by the relevant public).”
Regulation n°40/94 is equally applicable if the trademark is registered in a different language or if the disputed sign is registered entirely in a foreign language. (CJCE, 20 September 2001, « Baby Dry », n°C-383/99P)
The case law has thus proven that such a sign will have to be assessed objectively. A sign cannot be distinctive merely by bringing generic or descriptive elements together. For a sign to be considered as non-descriptive, an unusual variation in particular as to syntax or meaning, must be introduced.
Therefore, for a trademark to meet the requirement of distinctiveness, the combination of the elements or the spelling must consist of unusual or arbitrary choices. Adding a figurative sign may also allow the targeted public to identify it as a trademark.
The judges of the French “Tribunal de grande instance”, the civil court of first instance, considered in the Vizion’Air vs Minigroup case that the “droneshop” sign cannot constitute an enforceable prior right: with regards to the activity in question, it lacks the distinctive character. Indeed, a “drone” is a small unmanned aircraft and refers to the very nature of the products and items offered for sale, both in French or English. The term “shop” is derived from the English language and thus, could have been more specific. However, this term is widely understood by the French public as being the common designation for a store. In the court’s view, the combination of these two terms remains purely descriptive of the operated activity. It does not allow “an identification of the company concerned in order to distinguish it from other companies of the same sector.” In addition, inclusion of the personal pronoun “la” in the domain name of Vizion’Air, does not make the sign distinctive. The combination of different expresions in this case, does not form an unusual juxtaposition nor an arbitrary name.
The judges in this case also raised the issue that the use of foreign language is not enough to establish the distinctive character of the sign in question.
A term derived from a foreign language may be used as a trademark or as an element of a trademark. However, one should enquire whether, upon the filing of the expression, the term was already a part of everyday language for consumers or professionals. Furthermore, to be qualified for registration, the term should not be viewed as the term designating the product or service to a large section of the relevant public in France. This was found to be the case for the expression, “Air Sport Gun” for a compressed air gun destined to be used as part of a sports or leisure activity (, n° 07-82.105). The sign was not a distinctive one.
That the terms are descriptive in their original language will be of no relevance if they are not understood by a large section of the public concerned. This is not the case however for the expression “droneshop”.
In summary, this solution confirms that in France, using a foreign language is no longer considered as a distinctive feature of the sign when it is easily understood by the public at large, and the decision above proves a consistent approach in this area of the law.
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