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The opportunity to add a registered domain name to the complaint after the filing

Written by Dreyfus22/01/2021

domain nameIf Virgin Enterprises Limited (“Virgin”) was notably known by the French public as a megastore on the Champs Elysées, now permanently shut down; the company, on the contrary, is still very active in many different sectors such as travel, under the Virgin Voyages brand, or even in the mobile sector under the Virgin Mobile brand. As we all know, success is often followed by harm. Having detected the registration of domain names by a third party taking over its brands, namely <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, Virgin has filed an UDRP complaint against these names, July 23, 2020.

On the day the complaint was notified, July 27, the name <govirginvoyages.com> was registered and the applicant added it to his complaint. The expert reminds that a complaint can indeed cover several names, if they are registered by the same person or under the same name or under a common control.

In order to accept the request for consolidation, the expert takes in consideration the following elements:
* the names <govirginvoyages.com> and <virgincruisevoyages.com> that refer to identical sites and the same email contact;

* the registrant of the name <govirginvoyages.com> has the same first name as the registrant of of <virgincruisevoyages.com>, <virginmovilewifi.com> and <virginmediabiz.com>.

Thus, it seems possible to add a reserved name to a complaint after the filing.

Subsequently, the expert was able to conclude without difficulty that there was no legitimate interest of the defendant and bad faith. The defendant did not respond to the complaint.

All names resolved to sites copying those of Virgin and two of them, in particular, <virgincruisevoyages.com> and virginmobilewifi.com> were used in the context of fraud, aimed at “obtaining public information for commercial gain”. In addition, the registrar already used, in the past, other domain names related to Virgin’s brands. The expert said that “the use of some of the domain names involved in conducting an e-mail phishing scam is the type of illegal activity that is clearly considered to be the proof of bad faith”. This decision also highlights the need to be vigilant when mail servers – also known as “servers MX” – are set on a domain name. When such servers are set up, the reservee can send to anyb0ody e-mails from an address that includes the domain name, and endanger the company and its consumers; just checking if a website is in place on the names cybersquatted is not enough.

In this case, each single name was associated with a fake site and two of them had in addition a mail server that was carrying an e-mail fraud campaign. Thus, would be preferable to set up adequate surveillance on the company’s brands and to carefully analyze those, which are closest to the brand in order to take the right actions once the registration is detected.

 

 

Source: WIPO, Arbitration and Mediation Center, Oct. 23, 2020, aff. D2020-1921, Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg.

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The importance of taking care of the arguments within a complaint

Written by Dreyfus21/01/2021

Domain Privacy Service FBO Registrant / Cobra Jet, Cobrajetaviation Cobrajet, Inc. located in the United States, has filed an UDRP complaint to obtain the transfer of the domain name <cobrajetaviation.com>, reserved by the Egyptian company Cobra Jet, Cobrajetaviation which would harm its Egyptian trademark Cobrajet.

In February 2020, the applicant allegedly asked one of its employees to proceed with the registration of the name <cobrajetaviation.com> on his behalf. The latter would thus have reserved the name using his personal credit card first, and being reimbursed by the applicant later. When the job contract ended, he would have refused to transfer to the applicant the information she needed in order to take control over the domain name and its related website. This is a very common dispute and, once again, it give us the chance to recall the importance of establishing  naming charter within the company and the importance of assuring the respect of good practices: each domain name must be reserved by the company and with a generic e-mail address of type nomsdedomaine@entreprise.com.

Moreover, since this dispute involves a contractual dispute rather than a dispute over the on a classic case of cybersquatting, the expert rejects the complaint believing that it is for the courts to deal with this matter which “generates questions of contractual breaches, breaches of contract, breaches of fiduciary duties and potentially questions related to local labor laws”. The expert also said and pointed out that even if he could have known about the case on the merits, he would certainly have rejected the complaint, for two major reasons.

On the one hand, in order to prove its right on the trademark, the applicant has submitted the certified translation of a trademark application in Egypt, filed on January 26, 2020 and not yet registered. The expert also notes that a certified translation is not enough to determine who is the true owner of the trademark and that the copy of the original document  was missing as wall.

On the other hand, the expert believes that the applicant’s arguments are insufficient to demonstrate the defendant’s bad faith. He did not gave proof of the instructions addressed to the employee; therefore, it is not possible to determine whether he or she has complied with them. However, the UDRP procedure involves proving both the registration and the use of the name in bad faith.

Therefore, it is necessary to ensure that the complaint has a chance to succeed within the framework of the UDRP action, that it does not go beyond its scope and prepare the argument and the most important thing is to provide evident proof of its trademark right; presenting the request for a trademark that does not confer any protection. It should be also noted that the applicant gave an insufficient presentation of herself within the complaint, at the point that the expert indicates that they “presume” that the applicant is active in the aviation sector.

 

Source: WIPO, Arbitration and Mediation Center, Nov. 5, 2020, aff. No. D2020-2024 Cobrajet, Inc. v. The Endurance International Group, Inc,

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Liability of online platforms operators : where do we stand?

Written by Dreyfus31/08/2020

Operators of online hosting platforms will soon know exactly what responsibility to assume for illegal or hateful content published on these platforms. The current climate seems to be very conducive to clarifying the nature and extent of their liability.

In this respect, two schools of thought clash: for some, it is necessary to impose obligations to control the content published on these platforms, but for others, this would reflect the attribution of a new role to these operators, which has not been given to them on a basic level.

“There would be a risk that platform operators would become judges of online legality and a risk of ‘over-withdrawing’ content stored by them at the request of users of their platforms, to the extent that they also remove legal content,” said Advocate General Henrik Saugmandsgaard Øe, who presented his conclusions before the Court of Justice of the European Union (CJEU) on July 20, referring to request for  preliminary ruling a preliminary ruling made by the Bundesgerichtshof, the German Federal Court of Justice, on two disputes brought before the German national courts.

The first dispute (1) was between Frank Peterson, a music producer, and the video-sharing platform YouTube and its parent company Google over the users posting , of several phonograms without Mr. Peterson’s permission, to which he claims to hold rights.

In the second (2), Elsevier Inc, an editorial group, sued Cyando AG, in connection with its operation of the Uploaded hosting and file-sharing platform, over the uploading, again by users without its authorization, of various works to which Elsevier holds exclusive rights.

 

In said requests for preliminary ruling, it is a question of knowing whether the operator of content platforms such as YouTube, performs acts of communication to the public pursuant to Article 3(1) of Directive 2001/29 of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, a directive that was invoked against YouTube.

The answer is negative, according to the Advocate General, who invites the CJEU to bear in mind that the legislator of the Union has specified that the “mere provision of facilities intended to enable or carry out a communication does not in itself constitute a communication within the meaning of [this directive]”. According to the Advocate General, it is, therefore, important to distinguish a person performing the act of “communication to the public”, within the meaning of the Article 3(1) of the Directive 2001/29, from service providers, such as YouTube and Cyando, who, by providing the “facilities” enabling this transmission to take place, act as intermediaries between that person and the public. On the other hand, a service provider goes beyond the role of intermediary when it actively intervenes in the communication to the public – if it selects the content transmitted, or presents it to the public in a different way from that envisaged by the author.

Such a conclusion would lead to the non-application of the Article 3(1) of the Directive 2001/29 to those people facilitating the performance, of unlawful acts of “communication to the public”, by third parties.

 

Moreover, it is a question of knowing whether the safe harbour – in the case of “provision of an information society service consisting in storing information provided by a recipient of the service” – provided for in the Article 14 of the the Directive on electronic commerce n°2000/31 is in principle accessible to these platforms (according to the Advocate General, it is).

This provision provides that the provider of such a service cannot be held liable for the information that it stores at the request of its users, unless the provider, after becoming aware or conscious of the illicit nature of this information, has not immediately removed or blocked it.

However, according to the Attorney General, by limiting itself to a processing of this information that is neutral with respect to its content without acquiring intellectual control over this content, the provider such as YouTube, cannot be aware of the information it stores at the request of the users of its service.

The CJEU will, therefore, have to rule on these issues in the coming months.

Furthermore, it should be noted that in 2019, the Union legislator adopted the Directive No. 2019/790, not applicable to the facts, on copyright and related rights in the single digital market, modifying in particular the previous Directive of 2001. A new liability regime was introduced in Article 17 for operators of online hosting platforms.

Sources :

https://curia.europa.eu/jcms/upload/docs/application/pdf/2020-07/cp200096fr.pdf

 

  • C-682/18 Frank Peterson v Google LLC, YouTube LLC, YouTube Inc., Google Germany GmbH

 

C-683/18 Elsevier Inc. v Cyando AG

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Racism: when the news catches up with the brands

Written by Dreyfus20/08/2020

Uncle Ben’s, Eskimo Pie, Quaker Oats… Apart from the fact that they belong to the food sector, these brands have one thing in common: for a long time they did not seem to be a problem but current events, the #BlackLivesMatter movement and the evolution of society have rightly highlighted the racist side of their name, logo or slogan. These companies have made the decision to change their image and the brands they operate.

In order to be registered with the French office (INPI), a trademark must meet a lawfulness condition : it must not be contrary to public order and morality. Therefore, an obscene design, a Nazi insignia or a racist slogan will obviously be declared inadmissible at the time of their examination by the INPI services following their filings.

 

Independent assessment of the specialty

In trademark law, it is the sign itself that is taken into consideration. Thus, the lawfulness of the goods or services it covers is not relevant for assessing the conformity of a sign with the public policy. When assessing the conformity with the public policy and morality of the sign, the nature of the goods to which the mark is affixed or of the service which it designates is not relevant.

On the other hand, a mark deemed racist remains racist regardless of the nature of the goods or services it designates. The packaging mark “Paki” could have escaped the qualification of “contrary to public policy” with respect to the goods it designates. Indeed, the name of the mark is probably not intended to claim a racist idea, since it is a derivative of the verb “To Pack” meaning “to pack”. However, since the term “Paki” is also used to pejoratively refer to Pakistanis, the registration of this trademark would have contravened the principle of respect for public order and morality because of the racist reference implied by the trademark.

 

Assessment in regard to the relevant public

A trademark’s conformity to the public policy, and by extension its racist character, is determined by its potential to shock the public with which it will be exposed to. By “public”, we obviously mean the targeted consumers but also other people who, without being concerned by the said goods and services, will be exposed to this sign in an incidental manner in their daily lives. In this respect, the “Paki” trademark refused in the United Kingdom, where the racist term is very common, would probably not have caused the same unease in a country where this racist insult is not used.

It might also explain why trademarks such as Uncle Ben’s or Quaker Oats have not been considered racist at the time of their registration and for years to come. Intended for a predominantly Western audience and distributed in countries where “ordinary racism” has long been normalized, the public they were aimed at was not “shocked” by their image.

This situation is similar to the one of the Banania brand with the slogan “Y’a bon Banania”, vocalized by a Senegalese skirmisher. The slogan, meaning “It’s good” (C’est bon) in broken French, perpetuated, according to anti-racism associations such as the Movement against racism and for friendship between people (MRAP – Mouvement contre le racisme et pour l’amitié entre les peuples), the racist and denigrating stereotype that a black person was not capable of speaking French correctly.  Until the 1970s, the slogan was commonly used by the brand. On May 19, 2011, the Versailles Court of Appeal ruled in favour of MRAP in a decision in which it required Nutrimaine, the company that owns the Banania trademark, to stop selling any product bearing that slogan.

 

Companies owning the Uncle Ben’s, Quaker’s Oats and Eskimo pie brands have announced that they will remove or change their visual identities that perpetuate racial stereotypes. When it comes to trademark law, the assessment of the racist character by trademark offices is becoming more meticulous.

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The new trademark nullity procedure before the French Trademark Office (INPI)

Written by Dreyfus03/08/2020

On April 1, 2020, a new trademark invalidity procedure came into force with the French “PACTE” legislation. This law transposes the European Directive 2015/2436, commonly known as the “Trademark Package”, and establishes a new administrative action for nullity before the French National Institute of Industrial Property (“INPI“).

Previously, only the French court of first instance in civil, criminal and commercial matters (“le tribunal judiciaire”) was competent in trademark nullity actions. From now on, this competence is shared with the INPI.

This administrative procedure before the INPI makes it possible to obtain a decision within a shorter period of time (between 6 and 10 months) and at a lower cost.

 

 

 

 

 

Which trademark can be contested ?

 

An action for nullity may be filed against a registered French trademark or an international trademark designating France.

 

 

On what grounds can you file an action for nullity of trademark ?   

 

A trademark may be declared invalid if it is vitiated by a defect which corresponds to a ground for invalidity. For instance, this is the case if it is:

– It is devoid of a distinctive character,

– It describes the designated products and/or services;

– It misleads the public,

-It is contrary to public order or morality.

If the trademark infringes a third party right,  it forms a relative ground for invalidity.

 

Who can form an action for nullity or revocation of trademark?

 

In the past it was necessary to justify before the courts an interest in forming such action (is it a French procedural requirement in taking legal action)   . This “interest to act” (“intérêt à agir”) could even be strictly assessed by judges.

With regard to the new procedure, when the action is based on an absolute ground for nullity, it is no longer necessary to prove an interest in bringing the proceedings.

The absolute ground for invalidity is one relating to the intrinsic value of the trademark. For example, if the trademark is descriptive of the goods it designates (such as “White chocolate” for … white chocolate), then any one may form an action for nullity without having to justify any harm.

 

 

When is the INPI competent?

 

The distribution of actions between the judge and the INPI is determined by articles L716-2 and L716-5 of the Intellectual Property Code.

Henceforth, the INPI has exclusive jurisdiction in certain claims, including for instance :

— nullity actions based on earlier trade marks (Community or French Trademark, International Trademark designating France or the EU, well-known trade mark)

– invalidity actions based on a domain name, only if its scope is not only local and there is a risk of confusion, or

– actions for invalidity of trademarks filed by the agent or representative of the trademark owner without his consent

This is the case for actions mainly concerning nullity based on one or more absolute grounds (such as misleading nature), but also for actions mainly concerning nullity based on relative grounds (such as infringement of prior rights of a trademark or a corporate name). However, French courts remain competent in regards to invalidity actions based on copyright or rights resulting from a protected design.

 

 

What about applications before the wrong authority (INPI instead of the judge and vice versa)?

When the plaintiff files an action before the wrong court, the action will simply be declared inadmissible.

 

 

How does the procedure at the INPI work? (Art. R. 716-1 from R.716-8 of the Intellectual Property Code)

 

The procedure begins with a one-month pre-instruction phase. During this admissibility examination, the INPI checks that the application contains all the required documents and information (statement of grounds on which each claim is based).

Afterwards will occur an investigation phase, which may last six months, and during which written exchanges will take place between the Parties : each Parties will set out their arguments and respect each other’s’ possibility of responding to accusations (the French procedural “principe du contradictoire”).

At the end of this investigation phase, the decision-making phase will take place, over a period of three months. It will be possible to limit the action in the course of the proceedings, by limiting it to either certain goods and services covered by the contested trademark, or to only some of the contested trademarks.

If the INPI confirms the trademark’s nullity the nullity shall be pronounced within three months, by decision of the General Director of the INPI and shall take effect on the date of filing. Nullity, therefore, has retroactive and absolute effect. The decision shall be entered in the National Trademarks Register and published in the Official Bulletin of Industrial Property (BOPI).

 

 

What remedies are available against the INPI’s decision?

 

The INPI’s decision, like every court decision, may be appealed against before the French Court of Appeal where the applicant is domiciled.

The Parties will have one month to appeal, by electronic means, upon notification of the INPI’s decision. The compulsory details of the appeal will be required, otherwise the appeal will be inadmissible. It is important to note that this action has a suspensive, but also devolutive effect, which means that judges will be obliged to retry the case in its entirety. During the procedure of appeal, the Parties have a three months deadline to submit their conclusions, including all their claims on the merits. If necessary, a claim can be brought against the decision of the Court of Appeal : it is called a “pourvoi en cassation” in French legislation. Either the Director of INPI or the Parties can form such a claim.

Ultimately, the new nullity action procedure before the INPI, relieves the courts (the “tribunal judiciaire”) by its simplicity and speed. Hence, decisions will be rendered relatively quickly and, above all, more actions will be brought thanks to the limited costs of an administrative procedure.

 

 

ABOUT THIS TOPIC…

 

– How to bring an action for invalidity or revocation of a trademark before the French Trademark Office INPI?

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Raising funds through your intellectual property assets?

Written by Dreyfus29/07/2020

Start-ups’ executives, having difficulty obtaining loans to raise funds, may benefit from promoting their intellectual property assets, which can be used as loan guaranties or other credits. Indeed, intangible assets are among the preferred asset classes for investors seeking strong guarantees. As such, investment funds are offering more and more original solutions to fund start-ups.

 

Beyond the traditional tools of funding through intellectual property such as licenses, new ways of raising funds using intangible assets are emerging: auctions (by auction houses specializing in this field), online tradings, trusts, mortgages, etc.

 

On which assets should you base your collateral?

 

 

  • Patents

 

The patent portfolio of research companies is a valuable asset, provided it is kept under control. Under a mortgage, or a trust, the source of income, in order to be certain, requires the patent to be licensed.

 

  • Trademarks, designs

If the trademarks are licensed, they can give rise to a certain and regular income. They offer a valuable guarantee if the business is successful.  For instance, in the late 1990s DreamWorks and the Tussauds Group both granted security guarantee over their IP covering both existing and future IP[1].

 

Moreover, designs have the advantage of having a value independent from the company’s status. Therefore, they can be a guarantee of value for investors.

 

  • Copyrights

Copyrights lasts up to 70 years after the author’s death : as such, once ownership and value are proven, they provide a valuable guarantee for the investor. Thereupon, the World Intellectual Property Organization (WIPO) has demonstrated that the taking of guarantees over copyright in the film and music industries is widespread and increasing in the biotechnology and software industries[2].

The forerunner of this financial innovation in intellectual property, David Bowie, will be remembered when he sold the “Bowie Bonds” which provided him with a regular income of over $1 million per year earned on the 25 albums he recorded before 1990.

 

It is therefore important to think of your intellectual property rights as real assets, and to reconsider the way they can be used: they can become effective security interests, especially for SMEs or start-ups that are launching their business.

 

This is true all over the world. For example, in India the government has introduced loan guarantee schemes through the possibility of mortgaging your trademarks or patents in order to encourage start-ups and cover the risk of real commercialization failures based on assets mortgaged by intellectual property rights.

 

To be continued!

 

It now appears possible to raise funds through your intellectual property assets. Dreyfus, an expert in legal issues related to intellectual property since 2004, helps you protect and enhance your rights and advises you on how to best manage your assets.

 

 

[1] [1]« Taking security over IP » Fieldfisher – February 2015

 

[2] « The Challenge of IP Financing » WIPO – September 2008

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Sale of the domain name extensions: .cars, .car and .auto at auction

Written by Dreyfus23/07/2020

The domain name extensions (gTLDs) “.cars”, “.car” and “.auto” are about to be auctioned on July 13, 2020. Launched in 2015, these extensions have been at the forefront of innovation in the domain name and automotive marketing. They have been used around the world by dealerships, startups and major automotive technology companies.

After a five-year partnership, and more than $11 million raised, XYZ, a company offering new domain name options, and Uniregistry, both a registrar and a domain name registry, have jointly decided to divest this investment.

 

The auction will be conducted by Innovative Auctions, an independent auction consulting firm, and all assets to be auctioned will include the extensions in question, as well as all intellectual property rights, trademarks, social network accounts and high-value domain names such as <electric.car> and <rental.car>, which are currently reserved by Uniregistry.

It should be noted that this is the first gTLD auction in which anyone can participate. Interested parties can contact cars@innovativeauctions.com for more information.

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Admissibility of the complaint against several defendants, subject to the existence of a body of evidence

Written by Dreyfus22/07/2020

Source: WIPO, Arbitration and Mediation Center, May 7, 2020, No. D2020-0491, Crédit Industriel et Commercial S.A. and Confédération Nationale du Crédit Mutuel v. Whois Privacy Service / Yassine Ahmed / Yassine Cleoo / Yassinee Cleo / Yacin Helaloa / Robert Michel

 

The companies Crédit industriel et commercial (“CIC”) and Confédération nationale du Crédit Mutuel (“Crédit Mutuel”), which belong to the same group, jointly filed a UDRP complaint against six defendants, including an anonymous service, following the reservation of 25 domain names. One reproduces the trademark CIC ( ), the others the trademark Crédit Mutuel ( ).

In theory, the UDRP Complaint should only be directed at one defendant. However, a complaint against several defendants may be admissible if it is shown, by corroborating evidence, that the domain names were most likely reserved by the same person or are under common control, despite disparities in the information communicated by the registrants at the time of registration. This is known as “consolidation of the complaint”. Of course, each defendant is given the opportunity to rebut this alleged connection by filing a response in the proceedings.

Here, the expert accepted the applicants’ request for 24 of the 25 domain names in question. Indeed, numerous elements tend to show that these names are under common control:

– they have similar structures: <credit-mutual-online-space-customer-confirmation-mobile.net>, <credit-mutual-service-security.org>, <cic-online-space-customer-confirmationmobile.com>, etc.

. – three defendants have the same first name, except for a few spelling variations: Yassine Cleoo, Yassinee Cleo, Yacin Helaloa. And two of them have almost the same last name: Cleoo / Cleo;

– four defendants mentioned addresses in Madrid, Spain;

– the domain names have been reserved through the same registrar, Amazon Registrar, Inc. ;

– the reservation date is close: December 2019 ;

– all used the same anonymity service (first respondent, namely Whois Privacy Service).

On the other hand, the request for consolidation of the complaint was refused because of the 25th domain, reserved by the sixth defendant. In fact, the expert noted that the information which defines this domain name and its reserved name does not make it possible to establish a link with the other defendants:

– the structure of the domain is different: <creditmutuel.com;

– the reservee has given an address in France and not in Spain;

– the domain name was registered in January 2020 while the other domains were registered in December 2019. Thus, the expert, after analysing the complaint on the merits, agreed to the transfer of the first 24 domain names to the applicants. As for the domain name, they refused to pronounce its transfer, considering that it was not demonstrated that its registrant was linked to the other defendants. They specifies, however, that the applicants may very well file a separate complaint against this domain name if they wish so.

 

The consolidation of the complaint allows several complainants to file a joint complaint and to target several defendants at the same time or alternatively. When several defendants are involved, concrete elements that lead to the belief that the registrants are related, should be reported. In addition to elements relating to identity, one can take into account the structure of the domain names, the date of registration, the hosting providers and registration of the domain, the page that the domain points to, etc.

This possibility offered to complainants has several beneficial aspects: mutualizing costs, getting around the “trap” of cybersquatters which consists in filling in false data when reserving domain names, not to mention a considerable time saving for both right holders and arbitration centres.

 

Our commentary of the decision is available in the issue n° 7-8, July 2020, alert 54 of the review Industial Property.

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Invalidity action: assessment of the likelihood of confusion between a trademark and an earlier company name when the companies maintain economic links at the time of filing

Written by Dreyfus20/07/2020

In a decision of the Court of Justice of the European Union from April entretiennent, 2020 Gugler France SA v Gugler GmbH (Case No 736/18), the Tenth Chamber held, in the context of an invalidity action, that there is no likelihood of confusion between a trade mark and an earlier corporate name if, at the time of filing, the companies do in fact maintain economic links, and provided that there is no likelihood of error among the public as to the origin of the designated goods.

As a reminder, the Article L711-4 of the Intellectual Property Code states that it is not possible to register a trademark that could infringe prior rights, and in particular, if there is a likelihood of confusion, distinctive signs such as the company name or corporate name.

Thus, a conflict may arise when a company files as a trademark a sign that is identical to the corporate name of a company operating in the same sector of activity, creating in consequence a likelihood of confusion. The owner of the previous corporate name will then be entitled to act to cancel the trademark.

While the coexistence of a company name with a subsequently registered trademark had already been admitted (decision of the Paris Court of Appeal from February 24, 1999), it had also been affirmed that, if the use of the prior rights infringed their trademark right, the owner could request that the use be limited or prohibited (Commercial Chamber of the Court of Cassation of November 12, 1992). Therefore, the trademark right could defeat the prior right.

Thus, in case law, there is a certain prevalence of trademark rights over other distinctive signs.

In its decision from April 23 ,2020 Gugler France SA v. Gugler GmbH, the ECJ clarified the assessment of the likelihood of confusion between a trademark and an earlier company name.

 

The German company Gugler GmbH registered the semi-figurative Community trade mark “GUGLER” on August 25, 2003.

On November 17, 2010, Gugler France filed an application for a declaration of invalidity of the trade mark, in respect of all the goods and services designated, on the basis of its earlier company name.

The CJEU, seized after an application filed with the Cancellation Division of EUIPO and the filing of an appeal before the General Court of the European Union, confirmed the latter’s decision and dismissed Gugler France’s application for a declaration of invalidity.

In fact, on the day the trademark was registered, there were commercial relations between the parties, Gugler France being the distributor in France of the products manufactured by Gugler GmbH. In addition, Gugler GmbH held shares in the capital of Gugler France.

 

The Court held that the fact that consumers may believe that the goods and services in question come from companies which are economically linked does not constitute an error as to their origin.

The Court therefore rejects the argument of Gugler France that, in order to avoid the likelihood of confusion, the economic link must exist in a particular sense, namely from the holder of the earlier rights (Gugler France) to the holder of the later rights (Gugler GmbH).

According to the Court, the mere existence of a single point of control within a group in respect of products manufactured by one of them and distributed by another may be sufficient to exclude any likelihood of confusion as to the commercial origin of those products.

 

By this solution of the Court, the essential function of a trade mark right, which is the function of guaranteeing the identity of origin of the marked goods or services, is also indirectly recalled. The trade mark thus serves to distinguish the goods or services of one company from those offered by another company. Therefore, in this case, the commercial links between the two parties made it possible to consider that the goods had the same commercial origin.

 

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Figurative trademarks: be aware of the extent of your protection

Written by Dreyfus17/07/2020

The judges of the Paris Court of Appeal, ruling on a referral from the Court of Cassation, adopted a strict approach to similarities between a figurative trademark and a later , semi-figurative trademark in a dispute between two companies specialized in ready-to-wear clothing.

 

The company Compagnie Financière de Californie (“Compagnie de Californie”), which specializes in street wear chic clothing, is the owner of the trademarks on the sign, in particular for clothing products.

In 2013, the company noted that International Sport Fashion, also active in the fashion industry, had registered and used a trademark that it believes to be similar to its own:

 

The signs in question have the shape of an eagle’s head, without detail, reproduced in black and white within a circle.

In order to obtain compensation for the damage it considers to have suffered, Compagnie de Californie brought an action for infringement.

 

After having been dismissed at first instance and on appeal, the company turned to the Court of Cassation, which referred the case back to the trial judges after partial cassation.

The referring Court of Appeal first compared the trademarks in question. Its analysis is rigorous, particularly from a conceptual standpoint: it considers that the trademark of Compagnie de Californie refers to “the dark side of the bird of prey while the other refers to the image of a much less aggressive bird” (certainly due to the presence of a closed beak).

 

The court points out, among other things, that visually, these birds’ heads are not facing the same direction and that one has the beak closed and the other open.

 

On the phonetic level, the court notes, unsurprisingly, that the mark at issue will be pronounced “Eagle Square” in reference to the verbal element it contains, which will not be the case for the earlier mark.

 

The court, therefore, considers that there is no likelihood of confusion between the marks.

 

Next, it examines the question of the exploitation by International Sport Fashion of its mark for clothing products. The Court takes into account all possible elements such as the packaging which contains the goods. The name “EAGLE SQUARE” is affixed to the packaging; it, therefore, considers that there is no likelihood of confusion in the minds of consumers.

It also states that the contested sign which appears by itself on some of the articles is each time bicoloured, “inducing a caesura in the sign”, which gives an overall impression, very different from the earlier mark.

 

The court, therefore, did not grant the applications of Compagnie de Californie.

 

Thus, with respect to figurative marks, it is necessary to meticulously estimate the chances of success of an infringement action, since great similarities are generally required to recognize the likelihood of confusion.

This case shows that even marks with a comparable style (presence of a bird in a circle, with only the head entirely painted black) can coexist in the market.

It is questionable whether the Court of Appeal would have taken a different approach had International Sport Fashion affixed the only black and white eagle head to its products. The question also arises as to whether the outcome might have been partially different had  California Company also registered, as a trademark, its coloured eagle (which can be found in red on its official website https://www.compagniedecalifornie.com/).

 

Therefore, in addition to a detailed analysis of the chances of success before bringing an action, it is also necessary to protect the trademark as exploited, taking into account its variants, so as to benefit from the widest possible scope of protection.

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