… , which enjoys a sufficient distinctive character.
The American company France.com, Inc., established in Florida, just lost another battle against the French State, this time before the General Court of the European Union (case T-71/17 dated June 26th, 2018).
The practical trick consisting in the filing of the EU trademark application « 
» in Polish (second language: English) was clearly not sufficient to prevent the action of the French State…
It is this time as the owner since 2010 of the figurative EU trademark No. 1032440 that the French State contested this application by filing an opposition before the EUIPO. Despite an initial rejection, this opposition has been accepted following a decision of one of the EUIPO’s Boards of Appeal. Most importantly, the General Court recently confirmed this last decision, dismissing the referral filed by France.com, Inc.
The General Court justified the existence of a likelihood of confusion between both signs at stake by their “particularly high degree of phonetic and conceptual similarity” (point 96).
Certainly, the strong protection granted to the term “FRANCE” is questionable, all the more so the General Court indicated that “it has previously held that a mark corresponding to the shortened name of a State, the mark MONACO in the case in question, may be used, in trade, to designate the geographical origin or destination of goods or the place in which services are to be provided, and that, consequently, such a mark is descriptive of the products and services concerned” (point 51).
As regards the distinctive character of the term “FRANCE”, which is well the shortened name of the French State, the General Court reminded that:
- elements of a mark endowed of a “weak, or even very weak, distinctive character” are not “necessarily negligible in the overall impression created by that mark” (point 53);
- “the weak distinctive character of an element of a composite mark does not necessarily mean that that element cannot constitute a dominant element, since it may, on account, in particular, of its position in the sign or its size, make an impression on consumers and be remembered by them” (point 54);
- verbal elements of a composite mark are, as a rule, more distinctive than figurative elements since they will be pronounced by the consumers (point 55) ;
- an opposition procedure is not adapted to the contestation of the distinctive character of an earlier EU trademark insofar as the latter “has at the very least the minimum level of distinctiveness required in order to be registered” (point 56).
The General Court concluded that “finding that the earlier mark has weak distinctive character does not preclude a finding that there is a likelihood of confusion (…) Consequently, even in a case involving an earlier mark with weak distinctive character, there may be a likelihood of confusion” (point 97).
This judgement of the General Court is probably only another battle in the overall conflict for the appropriation of the sign “France.com”. Indeed, the cassation complaint filed against a decision of the Court of Appeal of Paris in a related case as well as another complaint filed before a Virginian court as regard the domain name “france.com” will be the next steps…
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Anaël DUVAL IP Lawyer
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Soazig THEMOIN Partner French and European IP Attorney |
Link for the decision: