A limit to trademark restrictions: a brokerage can display the distinctive brand of insurance companies.
By an interim ruling dated 14th January 2013, the TGI in Paris has stated that an insurance company cannot condemn a brokerage for displaying its brand and logo on a website if deemed necessary for its business activity. This would be in order to inform Internet users of the companies that it represents and whose products it is authorized to market.
The judge considered that there was no possible confusion for Internet users logging onto a site entitled Brokerage since they would automatically know that they were in contact with a broker representing several companies and not with the insurance company itself.
In this case the judge applied the exception of “necessary reference” under article L.713-6 b) of the French Intellectual Property Code (CPI). This exception permits the use of another brand “as a necessary reference to indicate the nature of a product or service, notably as an accessory or separate item, as long as there is no confusion as to product origin.” The displaying of the insurance company’s trademarks by the brokerage was necessary, it was neither an accessory nor a separate item, but these illustrations were only given as examples by the CPI. The use of the word “notably” allows for the broader application of this article. A similar judgment could also be upheld for maintenance or repair services which indicate the make of vehicles, for generic products which made reference to the original medicine in order to guide patients, or for the names of sporting events reproduced on websites for online betting.
This exception to trademark restrictions requires proof that there is no confusion as to the origin of products and services, as demonstrated by the judge referring to the overall understanding of Internet users logging onto the site of a brokerage. The ruling follows the trend of current legal practice on ‘necessary reference’. But it is bolder, in that the few decisions thus far on ‘necessary reference’ were within similar contexts, but in this decision the judge has innovated by entering a new field of insurance broker activities.
However, it is still simply an interim ruling. This decision is only temporary because it will have to be examined in detail and the jurisdiction established will perhaps revoke the extension of the necessary reference exception granted to brokerages.