General Court finds likelihood of confusion between France.com and French Republic’s earlier France mark
Richard Milchior, IP lawyer and partner, wrote an article for the World Trademark Review.
Summary of the case:
– French Republic opposed figurative mark FRANCE.COM based on earlier figurative mark France
– Board of Appeal and General Court found that there was likelihood of confusion due to high
degree of phonetic and conceptual similarity
– Court dismissed applicant’s argument that it had operated “www.france.com” for 21 years
Background
An individual applied for the registration of a figurative trademark consisting of an hexagon containing a stylised Eiffel tower and the word element ‘FRANCE.com’ in Classes 35, 39 and 41. The hexagon is the way French people represent the territory of metropolitan France. The mark was transferred to a company called France.com Inc, located in Florida, United States, before the decision of the Opposition Division.
The opponent was the French republic, on the basis of an international registration designating the European Union and consisting of a stylised Eiffel tower with the word ‘France’ below. This mark covered Classes 9, 35 and 41.
The opposition was rejected and the decision was appealed. The Board of Appeal overruled the Opposition
Division’s decision. The Board of Appeal considered that:
– the relevant public consisted of both consumers and professionals;
– the relevant public had a level of attention between average and high; and
– the likelihood of confusion should be assessed for the whole of the EU territory.
The board nevertheless agreed with the Opposition Division that the services were partly identical and partly similar.
The decision was appealed.
Decision
The applicant raised some imaginative procedural defences.
First one: to request that the General Court refer certain questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling. The General Court’s answer was easy and harsh: the preliminary ruling system creates a cooperation between the national courts and the CJEU, and not between the various parts of the CJEU.
Second one: to claim that the brief filed by the French republic was signed by individuals who were not authorised to act on behalf of the republic and was not in English, the language of the case. The court answered that the opponent, being a member state, was represented by its agents, who were recognised by the court as agents of that member state, and that a state is authorised to use its own language.
The procedural defences were thus rejected as inadmissible.
Substance
[…]