Conflict between a prior company name and a trademark

In a decision dated April 5, 2018 (no. 16-19655), the Court of Cassation, provided clarifications on the requirements for assessing the likelihood of confusion in the mind of the public where there is a conflict between a trademark and a company name.

The case was between, on the one hand, two companies, Capstone System Industry and Capstone Properties and, on the other hand, Capstone. Both parties operated in the field of real estate. Capstone had registered the semi-figurative trademarks “Capstone” and “Capstone l’immobilier neuf”, both of which were subjected to revocation actions by the two companies, on the ground that these trademarks violated their prior company name. The companies based their claim on article L711-4 of the French Intellectual Property Code, which provides that a sign may not be adopted as a trademark if it infringes on prior rights, including a company name.

Although the Court of Justice, in the case “Laguiole” of April 5, 2017 involving knives and cutlery, had already provided clarifications on the conflict between a prior company name and a trademark, these two jurisdictions do not approach the problem from the same angle although their visions appear complementary.  On the one hand, the Court of Justice recalled that the assessment of a likelihood of confusion must take into account the actual activity of the company claiming prior rights in a company name, and not the activities designated in the  statutes. This position had already been taken by the French courts, notably in the case “Coeur de Princesse” of July 10, 2012.  In that case, the Court of Cassation declared that “a company name is protected only for activities actually performed by the company and not for those listed in the statutes”. On the other hand, the 2018 decision delivered by the Court of Cassation gave the Court an opportunity to stand on the side of trademarks to provide additional clarifications on the assessment of the likelihood of confusion.  In such cases, only the goods and services covered by the trademark must be taken into consideration. In contrast, the trademark’s actual activity will not have any impact on the outcome of the dispute.  Thus, the Court of Cassation disagreed with the Court of Appeal for basing its decision on the actual activity performed by the holder and the conditions of use of the trademark.

Furthermore, this recent decision of the Court of Cassation reminds us that the likelihood of confusion must be assessed globally, based on the overall impression created by the invoked prior company names and the trademark. In this particular case, the Court of Cassation criticized the Court of Appeal for not stating the reasons why they discarded the term “Capstone” in the analysis of the likelihood of confusion.

Finally, the decision states that the elements unrelated to the invoked prior signs, for instance the logos, should not be taken into consideration. In the global assessment of the signs and the invoked prior company names, the Court of Cassation criticized the Court of Appeal for having relied on the clear difference between the calligraphic and graphic charter of the semi-figurative trademark “Capstone L’immobilier neuf” and Capstone Properties’ logo. By taking into consideration the logo chosen by the entity having the company name “Capstone Properties”, the Court of Appeal based its decision on an element foreign to the invoked prior signs. However, the Court should have only considered the company name in a strict sense – that is only considering the verbal elements.

Hence, this decision is instructive as it provides guidance on the Court’s stand as to when a company name is likely to constitute a right prior to a trademark.

The Court of Justice and the Court of Cassation have previously adopted a pragmatic and practical approach in the assessment of a likelihood of confusion when considering company names, by taking into account the actual activity of the company. In contrast, the Court of Cassation’s recent decision seems to take a more theoretical approach when it comes to trademarks. Indeed, the Court only retains the goods and services indicated in the trademark registration in order to determine the activity of the trademark owner. When it comes to the trademark, the actual activity will then be left, as we understand it, to an action based on unfair competition. It is therefore important to pay close attention to the action that one undertakes and to rely on the adequate grounds.