“The fact alone that the incriminated sign is an approximate French translation of the invoked trademark” is not enough for finding counterfeiting !
Or clear proof of the benefit of choosing a distinctive trademark.
As part of a lawsuit between Bolloré Group and Métropole Nice-Côte-d’Azur, the Paris High Court (Tribunal de Grande Instance de Paris) has come to an interesting judgment regarding English-composed trademarks.
Firstly, the Court ruled that the verbal trademark “BLUECAR” has sufficient distinctive character to identify electric cars and car rental services.
It is indeed stated that “BLUECAR” is not “the necessary, generic or usual denomination for an electric car and is neither used to designate the eco-friendly and non-polluting character of a car”.
In addition, judges rejected the existence of a likelihood of confusion between “BLUECAR” and the trademarks “AUTO BLEUE” and “” used in correlation with car renting services, despite the fact that one of the latter is “purely” verbal.
The court essentially gave arguments based on conceptual differences between the signs to justify its decision: “intellectually, both signs at stake refer to cars in the way that the invoked trademark includes the word CAR, and the incriminated sign the word AUTO, as well as the colour blue, the English word BLUE being widely understood by the French public. However, they differ in the contraction in one word of the invoked trademark while the two words AUTO BLEUE of the incriminated sign reinforce their descriptive character as well as in the fact that a different language is used, the noun appearing first in French while the qualifying adjective is first in English in the invoked trademark, AUTO BLEUE being moreover not the translation of BLUECAR which would be translated into VOITURE BLEUE”.
“The fact alone that the incriminated sign is an approximate French translation of the invoked trademark” is not enough, according to judges, for finding counterfeiting.
This interpretation is rather surprising given the growing use of English, whether by average French consumers or advised professionals. It would be therefore interesting to study the potential analysis of the Court of Appeal in the event that the Bolloré Group contests this decision.
Judgment reference: TGI de Paris, S.A. Bolloré c/ Métropole Nice Côte d’Azur et S.A.S. Venap, RG n°16/05528, 25 mai 2018.
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