Trademark infringement and overall similarities: LinkedIn and Colink’in


linkedin-911794_960_720The Paris Court of Appeal (Cour d’appel de Paris), in its decision of 5 February 2016, held that the trademark Colink’In did not constitute an infringement to the trademark LinkedIn. The court sentenced the companies LinkedIn France and LinkedIn Ireland to pay 15 000 € to the company Colink’In in respect of its legal costs incurred. LinkedIn alleged an infringement by reproduction of the verbal and complex Community trademarks LinkedIn with regards to the filing, the registration and the use of the trademark CoLink’In, as well as the corporate name, trade name and the eponymous brand.

Trademark infringement’s appreciation: regarding the overall similarities

The Commercial Chamber of the French Supreme Court (Cour de cassation), by a decision of 25 March 2014, had previously had the opportunity to state the principle according to which an infringement should be construed with regards to overall similarities. The French Supreme Court (Cour de cassation) had stated the criteria for the determination of the infringement of a trademark in terms of a potential risk of confusion in the mind of the consumer. In this decision, the French Supreme Court (Cour de cassation) had restated the principle for the general interpretation of the risk of confusion and outlined: with regards to intellectual property, any infringement is construed from overall similarities and not from small differences (Cass. Com., 4 Jan 1982, Ann. propr. ind., p.244).

Furthermore, the Court of Justice of the European Communities, which had set its case law through three fundamental decisions, held that the infringement of a trademark is construed with regards to the overall idea given by a brand sign (CJCE, 11 Nov. 1997, aff. C-251/95, Sabel ; 29 Sept. 1998, aff. Canon ; 22 June 1999, aff. C-342/97, Lloyd). Therefore, not only should the trial judges set out the differences, but they must also find out whether the existing similarities do not create a risk of confusion.

In the present case, the Paris Court of Appeal (Cour d’appel de Paris) held that a consumer could not mistake the nature of the products and services offered by each party, after having analysed the construction, pronunciation and perception of the opposed brand signs. The pronunciation of the term Linkedin did not lead to a risk of confusion between the two brand signs and phonetical similarities seemed trivial. Indeed, in France “it cannot be certain whether the targeted public would pronounce the said trademark as Lin[k]din instead of Link[eu]din or Link[é]din”.

Finally, while the court concedes that LinkedIn is a reputed trademark, it does not recognise, however, “that the contested brand sign had negatively affected the identity of the trademark resulting in a decline in its market value, nor that it caused any tarnishing or blurring”. It therefore rejected LinkedIn’s claims for damages on these grounds against the respondent company.

Read the decision here

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