No likelihood of confusion for the juxtaposition of a corporate name with a prior trademark: ECOLAB / KAIROS ECOLAB.

It was after a lengthy procedure that the French Supreme Court, the Cour of Cassation, in its judgment delivered by the Commercial Chamber on November 14, 2018, held that there was no likelihood of confusion between the prior mark ECOLAB and the contested mark KAIROS ECOLAB.

Ecolab USA Inc, owner of the earlier trademark “ECOLAB”, had filed an opposition to the application by KAIROS.   for registration of the French trademark “KAIROS ECOLAB”. Ecolab USA Inc. based its claim on its international word trademark “ECOLAB” designating the European Union and registered on April 6, 2009. The company could also claim priority because of a November 26, 2008 German registration.

The trademark “KAIROS ECOLAB” has been registered by SARL Kairos, which has an ecological laboratory for which it uses this trademark.

The opposition filed by Ecolab USA Inc. was rejected by the INPI Director on August 8, 2013.

The Paris Court of appeal, in its judgment of April 25, 2017, which was held on remand after the first decision in appeal had been quashed by the Court of Cassation, , rejected again Ecolab USA’s opposition by demonstrating that there was no likelihood of confusion between the trademarks “ECOLAB” and “KAIROS ECOLAB”. Ecolab USA Inc. lodged an appeal against this decision to the French Supreme Court.

In its judgment, the French Supreme Court clarifies the assessment of the likelihood of confusion when dealing with a prior trademark composed of a term (here Ecolab) and a later trademark composed of a juxtaposition of the same term (Ecolab) and a new term corresponding to the applicant’s corporate name (Kairos).

The Court reiterated that the French Intellectual Property Code, in Article L713-3(b), prohibits the imitation of a trademark and its use, for goods or services identical or similar to those designated in the registration, if this may result in a risk of confusion on the part of the public.

Furthermore, the Court of Justice of the European Union, in its judgment LIFE / THOMSON LIFE (C-120-04), interpreted Article 5 of Directive 89/104/EEC of December 21, 1988 as meaning that a likelihood of confusion may exists in the mind of the public in the event of the identity of the goods or services, where the contested sign consists of the juxtaposition, on the one hand, of the name of the third party’s company and, on the other hand, of the registered trademark, which has normal distinctive power, and which, without creating by itself the overall impression of the composite sign, retains in the latter an autonomous distinctive position.

The French Supreme Court stated that the Court of Appeal had violated Article L713-3 of the French Intellectual Property Code, by holding that the trademark “ECOLAB” did not retain an autonomous distinctive position within the sign “KAIROS ECOLAB”.

The Court of Cassation noted that the contested trademark consisted of the juxtaposition of the earlier trademark with a company name, “Kairos”. This corporate name is a perfectly arbitrary term placed in a position of attack in the contested trademark and has an important semantic value.

The French Supreme Court held however that “while the term “Ecolab” has its own distinctive character evoking an ecological laboratory, the term “Kairos”, which is perfectly arbitrary, refers to the corporate name of the eponymous company and is placed in a position of attack, has an important semantic value which is superimposed to the term “Ecolab” to form a conceptually different whole from the earlier trademark by referring to the ecological laboratory of the company Kairos, which is precisely identified , so that it constitutes a whole unit having a different meaning with respect to the meaning of said elements taken separately”.

Consequently, the juxtaposition of the corporate name “Kairos” with the term “Ecolab” forms a conceptually different whole, “KAIROS ECOLAB”, compared to the prior trademark “ECOLAB”. There will therefore be no likelihood of confusion in the minds of the public between the two trademarks. The public could therefore not believe that the contested trademark is be a version or an adaptation of the prior trademark.

It should therefore be noted that even if there is an identity or a similarity between the goods and services, such a juxtaposition, because it forms a conceptually different whole with respect to the prior trademark, will make it possible to avoid the risk of confusion in the minds of the public and consumers. The juxtaposition can thus be registered at the INPI as a trademark for the goods and services it designates.