NEWS

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10-11-2017

 

On the validity of marks consisting of the term “France” 

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On September 22, 2017, the Paris Court of Appeal rendered a judgment concerning the validity of several “France.com” trademarks, in particular to designate products and services aimed at promoting tourism on French territory.1

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The procedure initially opposed an American company called "France.com Inc", which held the domain name "france.com" to a Dutch company, which was the owner of several French trademarks "France.com" and had filed several applications for registration of community trademarks “France.com”. The Dutch company finally agreed to transfer all of these "France.com" brands to the American company. 

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The French State voluntarily intervened in this procedure in order to establish that the disputed “France.com” trademarks infringed the rights of the French State over the name of its territory. It therefore requested the transfer to its benefit of the “France.com” trademarks, and, in the alternative, their cancellation because of their misleading nature and because they would be contrary to public order. It also requested the transfer to its benefit of the domain name "France.com". 

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The High Court of Paris, on November 27, 2015, authorized the transfer of the disputed trademarks to the benefit of the French State, on the grounds that the disputed trademarks have, on the one hand, the "effect of an undue privatization of the name of the community for the benefit of its holder while this name should by nature remain for public and collective use and on the other hand, comes up against the rights of the French State on its name, which designates a sovereign state, identifies a country with its economic, geographical and cultural identity (…)”. 2

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The Court of Appeal overturned the judgment on this point, considering that it had no information enabling it to assess whether the applicant for the disputed trademarks had sought to deprive the French State of a sign likely to preserve its identity and/or sovereignty. 

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On the other hand, the Court of Appeal canceled the disputed trademarks, considering thatthe name "France" claimed by the French State was likely to constitute an anteriority within the meaning of article L.711-4 of the Intellectual Property Code, since there is a risk of confusion in the spirit of the public. 

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She underlined that the term "France" "constitutes forthe French State an element of identity comparable to the surname of a natural person; that this term designates the national territory in its economic, geographical, historical, political and cultural identity". It thus applied the case law specific to prior art consisting of a patronymic name by seeking the existence of a risk of confusion._cc781905-5cde -3194-bb3b-136bad5cf58d_

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It then characterized the existence of a likelihood of confusion, considering that "the general public will identify the goods and services [designated by the disputed marks] as emanating from the French State or at the very least from an official service benefiting from the guarantee of the French State". It specified, with regard to the disputed complex trademarks in question, that their graphics, consisting of the “stylized representation of the geographical borders of France” increased the risk of confusion. The Court also ruled that "the ".com" suffix corresponding to an Internet extension of a domain name is not likely to modify the perception of the sign. 

 

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1 CA Paris, September 22, 2017, www.Legalis.net 

2 TGI Paris, 27 November 2015, RG n°14/08237 

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Finally, the Court of Appeal confirmed the judgment of the Paris Tribunal de Grande Instance insofar as it granted the request to transfer the domain name France.com to the benefit of the French State._cc781905-5cde-3194 -bb3b-136bad5cf58d_

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This ruling could have significant repercussions given the large number of trademarks consisting of the term "France".3 Trademarks consisting of the term "France" could already risk being deemed descriptive (non-distinctive), for example, if the goods or services covered by these marks actually come from France (in that they would describe the origin of the goods or services covered). They could also risk being considered deceptive, for example, if the products or services they target do not come from France (in that they could mislead the public as to the origin of the products and services targeted).  

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In addition to these risks, there is therefore a new one, that of infringing on the anteriority held by the French State on the term “France”. This new risk does not seem negligible, because it seems to be able to exist regardless of the products or services targeted by the mark made up of the term “France” and regardless of the origin of these products and services. On the other hand, as the Court of Appeal pointed out, there must still be a risk of confusion in the mind of the public between the mark consisting of the term "France" and the name "France" claimed by the French State. It will therefore be necessary to ascertain, in practice, whether consumers of average attention are not likely to consider the goods or services covered by the mark consisting of the term "France" "as emanating from the French State or at the very least from an official service benefiting from the guarantee of the French State". 

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It is interesting, in this respect, to note that the Court of Appeal preferred to assimilate the term "France" to a patronymic name and thus to seek the existence of a risk of confusion to characterize the existence of an opposable anteriority , within the meaning of article L.711-4 of the Intellectual Property Code, rather than assimilating it to the name of a local authority, which does not constitute an opposable prior art within the meaning of article L.711-4 of the Intellectual Property Code, only if the choice as a trademark of the name of a local authority is not faulty. 

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Thus, this judgment is a new demonstration that the filing as a trademark of a geographical name, although theoretically possible, in accordance with article L.711-1 of the Intellectual Property Code, seems increasingly uncertain. . 

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Carole Couson-Warlop, Associate Lawyer ARTLEX 

Florence Fekom, Associate Lawyer ARTLEX 

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