NEWS

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12-10-2018

 

Necessary reference to another's brand on a website

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The Nanterre tribunal de grande instance recalled, in an interim order of September 17, 2018, that the owner of a trademark cannot object to his trademark being cited on a website as soon as he is a " reference needed ".

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In this case, a company, an intermediary in real estate transactions, SARL LAURENT COHEN, published on its websites advertisements relating to resale properties operated and managed by the company RESIDE ETUDE, mentioning its quality of lessor and reproducing its marques, notamment « RESIDE ETUDES » et «  LA GIRANDIERE_cc781905-5cde-3194-bb3b -136bad5cf58d_”. La SARL LAURENT COHEN  was given formal notice to withdraw these announcements by the companies RESIDE ETUDE and RESIDE ETUDES infringement of their trademarks.

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The Nanterre tribunal de grande instance ruled that SARL LAURENT COHEN, which operated the websites, did not make unlawful use of the disputed marks, considering that the " reference made on these announcements to RESIDES ETUDES is explicitly indicated to identify the aforementioned company (RESIDE ETUDES) in charge of the management of these properties for resale ”.

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The judges relied on article L. 713-6 b. of the intellectual property code which limits the exclusive right of the trademark owner. Pursuant to this article, the holder of a mark cannot in fact oppose the use of his mark as a "  reference necessary to indicate the destination of a product or service, in particular as an accessory or spare part, provided that there is no confusion in their origin ".

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This exception to the exclusive right of the owner of the trademark, initially created for the benefit of manufacturers of accessories and spare parts, has been gradually extended by case law. In particular, it has been judged that the reference to airline brands is necessary in the context of the sale of airline tickets (Com., 10 Feb. 2015, No. 12-26023). This summary order is therefore an extension of current case law and provides a new example of the application of this exception to the trademark owner's monopoly.

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Article L. 713-6 b nevertheless lays down conditions for being able to benefit from this exception. First of all, the reference to another's brand must absolutely be “ nécessaire ” to indicate the destination of a product or service. In addition, this reference must not create any risk of confusion as to the commercial origin of the product or service. 

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In this case, the judge took care to note that " the references to the company RESIDE ETUDES (…) ne create no confusion on the origin of these goods and make it possible to distinguish the manager and the seller of the goods ". He considers that the use of third-party trademarks by the company SARL LAURENT COHEN was lawful since it was carried out for the sole purpose of identifying the plaintiff companies as property managers. This usage avoids any confusion in the mind of the consumer as to the commercial origin of the real estate offered for resale on the websites in question. 

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The court also holds that insofar as the plaintiff companies do not provide proof of an exclusive marketing contract concluded with the owners of the real estate, it is not possible to prohibit the use of intermediaries in transaction , such as SARL LAURENT COHEN, to resell them. The absence of such a contract reinforces the absence of risk of confusion in the origin of the products and services in question.

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It therefore appears that the court concentrated exclusively on the characterization of the absence of risk of confusion as to the origin of the products in question, without specifying, or even, it seems, investigating whether, in this case, the reference to the disputed marks was indeed " nécessaire " to indicate the destination of the goods. He thus deduces the legality of the use without even characterizing the need to refer to another's mark. It seems that the simple information of consumers is worth in this case " nécessité ". Such silence on the necessary character of the reference nevertheless seems regrettable insofar as the exceptions are strictly interpreted.

 

Carole Couson-Warlop, Lawyer, ARTLEX, Nantes

Morgane Suffer,Lawyer, ARTLEX, Nantes

 

High Court of Nanterre, interim order, September 17, 2018, Reside Etudes Investissement, Reside Etudes / SARL Laurent Cohen, and MX, Case law, trademark law, intellectual property law, counterfeiting, necessary reference, citation, trademark, exception, article L. 713-6 b, intellectual property code, website, advertisements, indication of the destination of the product, reference to the brand, risk of confusion in the mind of the public