Intellectual Property Code Article L.711-4 prohibits adoption of a sign that infringes on prior rights, especially business and trade names that are well known within the country if there is a likelihood of confusion in the mind of the public. By judgement dated July 8, 2016, Marseille’s Tribunal de Grande Instance extended the prohibition to trademarks and domain names that infringe, not only on such names but on their acronyms (TGI Marseille, 1e ch. Civ., 8 juillet 2016, n° 14/06485, Association ACFA c/ Société ACFA Multimédia inédit). This extension is justified by the presence of the French adverb translating roughly to “mainly” or “namely” in said article, emphasizing the non-exhaustive nature of the list that follows. Indeed, emphasis must be placed on the existence of a likelihood of confusion on the part of the public, a notion that merits examination on a case by case basis and per the facts of each case.
In this particular case, we have on the one hand the Association de Création et de Formation Audiovisuelle (ACFA): registered with the Rhône Prefecture since 1991, it is registrant of the domain name “acfa-cinema.com” used since 2009 and called by its acronym, ACFA, by everybody in contact with it. On the other hand we have SAS ACFA Multimedia: it is a school that offers training in trades of sound and image, registered with the Montpellier Trade and Companies Register in 2000, owner of the French trademarks “ACFA” and “ACFA CINE” registered in 2011 and 2012 and registrant of the domain names “acfacine.com” and “acfa-cine.com”. Following failure of the lawsuit filed by the latter in which the company tried to oppose its’ trademarks to the association for procedural reasons, the association sued the company and requested cancellation of their trademarks due to invalidity. They also requested transfer of the two domain names over to them. The court upheld the claim on the basis of Article L711-4 of the Intellectual Property Code and granted the award of damages. The judges revealed the likelihood of confusion between both entities which both provide training in the same field, and, unlike the association, the company had no explanation as to the origin of the acronym “ACFA”. Hence the association’s acronym has gained the value of a known commercial mark through use, and constitutes a protected prior right.
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