France v. France.com and the concept of trademark infringement in the EUThe EU trade mark system protects any trademark filed in the EU via the EUIPO as well as (inter)national trade mark registrations. The EUIPO and national trademark agencies recognize a variety of different signs as being a protected trademark, as long as it concerns signs to distinguish certain goods and services. EU trade-marks in most cases are a word and/or a logo.
Trade mark protection
Trademark protection in the EU is governed mainly by the EU Trademark Regulation and the Trademark Directive. These laws are part of Europeanly harmonised trademark law system. The same system grossly applies in the Netherlands
A few exceptions aside, in principle trademarks are only protected in the EU once registered.
The EU trademark registration system is based on the ‘first-to-file’ principle, laid down in Article 8(2) of Regulation No 207/2009. In accordance with that principle, a sign may be registered as an EU trade mark only in so far as this is not precluded by an earlier mark, whether that be an EU trade mark, a trade mark registered in a Member State or by the Benelux Office for Intellectual Property, a trade mark registered under international arrangements which have effect in a Member State, or a trade mark registered under international arrangements which have effect in the European Union.
In the process of filing a EU trademark, third parties have the right to oppose against an application on certain grounds. This is what happened in the France v. France.com case. After filing for a EU-trademark, there is also the possibility of starting a cancellation procedure based on the same grounds. These grounds are based more or less on the same grounds that apply is a trademark infringement lawsuit.
Opposition or cancellation procedure
In short, trademark holders may oppose to a third party trademark application, or cancel after the registration process, on grounds mentioned in the EU Trademark Regulation. One of the grounds is article 8(1)(b) of Regulation No 207/2009, which provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
The Republic of France opposed against the registration of the mark ‘France.com’. The opposition was based on an earlier international registration, designating the European Union, for similar classes of goods and services. First, the opposition was rejected, thereafter this decision was overturned and now the matter was referred to the CJEU filed by the France.com Inc.
Likelihood of confusion
According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered.
- Visual similarity
The Court considers the signs at issue, as a whole, to have only a low degree of visual similarity:
64 (…) the signs at issue also contain differing elements. What is more, the general way in which the signs at issue are set out is visually different.
65 As pointed out by the applicant, the mark applied for contains a pentagon and the abbreviation ‘.com’, elements that are not present in the earlier mark. By contrast, the earlier mark contains a figurative element depicting an Eiffel tower in black, a colour that does not appear in the mark applied for, and a scarf in blue, white and red, which is another element that does not appear in the mark applied for.
66 As far as concerns the figurative element depicting the Eiffel tower, it is represented in a different way in the signs at issue. That element, a standalone element depicted in black, is large and immediately apparent in the earlier mark. By contrast, the same element is depicted in white inside a pentagon, a colour that has not been claimed by the applicant, and is smaller in the mark applied for. Therefore, it may not be noticed immediately by consumers.
67 Moreover, the font of the word element ‘france’ is also different in the signs at issue. The word element in question is written in uppercase bold letters in the mark applied for. By contrast, in the earlier mark, that element is written in lowercase letters and in a font reminiscent of handwriting.
68 As far as concerns the word element ‘.com’, present in the mark applied for only, it is true, as the Board of Appeal was correct to observe, that a reasonably observant consumer will immediately recognise that element as referring to a website, namely, a generic top-level domain (judgment of 28 June 2016, salesforce.com v EUIPO (SOCIAL.COM), T‑134/15, not published, EU:T:2016:366, paragraph 23). However, this does not mean that the element is necessarily negligible in the overall impression conveyed by the mark applied for.
69 Lastly, it is clear that, although the signs at issue share the colours blue, white and red, the way in which they are set out differs. Thus, the colour blue is dominant in the impression conveyed by the mark applied for. By contrast, the impression conveyed by the earlier mark is dominated by the colour black, which, moreover, is not present in the mark applied for, whereas the colours blue, white — which has not been claimed by the applicant — and red play a less important role.
70 In those circumstances, it is clear that, contrary to the Board of Appeal’s finding in the contested decision, the signs at issue, considered as a whole, have only a low degree of visual similarity.
- Phonetic similarity
The Court finds that the signs at issue are almost identical phonetically, because it says the figurative elements of the earlier sign should not be taken into account for the purpose of the phonetic comparison of the signs at issue, while the ‘.com’ element will be perceived as referring to a website.
- Conceptual similarity
With regard to the conceptual similarity, the Court’s findings are very interesting.
The Court finds that ‘it is clear that the signs at issue contain almost exclusively elements that refer to the same concept. The word element ‘france’ refers to a State, namely the French Republic. The figurative elements in the signs at issue refer to a symbol widely known to be associated with that State, namely the Eiffel tower and the colours blue, white and red. The same holds true for the figurative element, present only in the mark applied for, depicting a pentagon, the shape of which brings to mind the ‘Hexagon’, an expression designating the continental part of metropolitan France.'
Next, the Court finds that, as the trade marks refer to the same concept, represented by the word element ‘france’ and the figurative element depicting the Eiffel tower, that is to say, France, the signs at issue are conceptually identical, and the element ‘.com’, present only in the mark applied for, is not sufficient to enable those signs to be differentiated conceptually.
The Court says that according to settled case-law ‘the word element ‘.com’ cannot alter the meaning conveyed by the word element ‘france’ and the other elements of the mark applied for, as it does no more than convey the idea that the goods covered by the trade mark applied for may be inspected or bought online (see, to that effect, judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 63).’ Thus, as the elements of the signs at issue convey the same concept, the presence of the word element ‘.com’ in the mark applied for cannot have any bearing on whether those signs are conceptually identical.
Finally, the Court globally assesses the risk or likelihood of confusion, under the taking into account that the Board of Appeal’s assessment that the services in question are in part identical and in part similar was not disputed by France.com Ltd. The Court rules that given ‘the particularly high degree of phonetic and conceptual similarity between the signs at issue’, it must be held that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Concept protection of trade marks
This judgment means that trademark holders may in certain cases -heaviliy- depend on the concept which their trademark conveys. In this case, even regarding the weak distinctive character that the earlier mark may have (France is more or less descriptive) the Court found it is sufficient to note that such a finding does not preclude a finding that there is a likelihood of confusion in the present case.
Relevance for injunction procedure
If there is a trade mark infringement, the trade mark holder may also start an injunction procedure (trade-mark lawsuit) against any infringing use by a third party. As mentioned above, the grounds of such a procedure are comparable to those to be invoked in a opposition procedure or cancellation procedure. In such an injunction procedure, the court must also assess the similarity of the trade mark on the one hand and the infringing sign on the other. Therefore, the above mentioned case may also be found relevant in infringement cases, especially those that involve trade marks which convey a strong conceptual relevance or output.
Joost Becker, trade mark lawyer