“Jours de France” v. “Jour de France”: online use considered as genuine use to avoid revocation of a trademark

Dreyfus, expert des nouvelles technologies

Between 1954 and 1989, the newspaper Le Figaro published a magazine under the trademark “Jours de France” registered on June 16, 1988. As of 2011, Le Figaro relaunched the publication as an online magazine under the domain name <joursdefrance.lefigaro.fr>. Only on August 7, 2013 did Le Figaro also relaunch the distribution in hard copy.

After receiving a letter of formal notice from the company Entreprendre, owner of the French trademark “Jour de France” registered on February 25, 2003, Le Figaro sued Entreprendre in a counterfeit action for trademark infringement. Thus, Entreprendre argued the revocation of Le Figaro’s rights on its trademark for non-use, invoking article 714-5 of the French Intellectual Property Code: “An owner who has not put his mark to genuine use in connection with the goods or services referred to in the registration during an uninterrupted period of five years, without good reason, shall be liable to revocation of his rights”.

The issue was whether the use of a trademark on the Internet constitutes a genuine use or not, in accordance with article 714-5 of the French Intellectual Property Code. In a decision dated November 20, 2015[i], the Paris Court of Appeal overturned the Court of First Instance’s decision[ii] to forfeit Le Figaro’s rights to its trademark.

According to the Court of Appeal, the reports provided by the bailiff, demonstrating that the number of single visitors (on average 1 700 per month, during off-peak periods) is not significantly lower than the number of visitors, proved the existence of the magazine’s publication on the Internet and consequently the effective and genuine use of the “Jours de France” trademark, irrespective of the trademark’s quantitative use.

Indeed, the Court of Appeal, in line with the ECJ’s decisions Ansul[iii] and La Mer Technology[iv], considered firstly, that the quantitative criterion does not constitute a defining assessment and secondly, that the online dissemination of the magazine is likely to broaden the audience reach of the product.

The Court of Appeal also specified that the publication of hard copies of the magazine, even at a low distribution rate, supported the genuine use of the trademark.

[i] Paris Court of Appeal, 5th Division, 2nd Chamber,  November 20, 2015, RG No. 15/00522

[ii] Court of First Instance, 3rd Chamber, 4th Section, December 18, 2014, RG No. 14/00649

[iii] ECJ, Ansul BV v Ajax Brandbeveiliging BV, March 11, 2003, Case-40/01

[iv] ECJ, La Mer Technology Inc. v Laboratoires Goemar SA, January 27, 2004, Case-259/02