A decision issued by the First Instance Court of Paris on 17 March 2016 (3rd chamber, 4th section, case number 2015/06994) caught our attention and deserves a comment that could prove useful to holders of renowned trademarks attempting to enforce their IP rights in France.
The British motor company BENTLEY MOTORS LTD, now part of Volkswagen group, found out that a Chinese company had the French trademarks JACK BENTLEY, BENTLEY JACK and B JACK BENTLEY (figurative mark) registered in connection with alcoholic beverages in 2013.
BENTLEY MOTORS owns French trademark registrations for BENTLEY and B (figurative mark). The BENTLEY marks are registered in connection with all sorts of goods and services (actually they are registered in all classes of goods and services) including vehicles.
BENTLEY MOTORS intended to demonstrate that the use of the marks JACK BENTLEY, BENTLEY JACK and B JACK BENTLEY by the Chinese company was infringing the BENTLEY marks, claiming that these marks enjoyed reputation within the meaning of Article L.713-5 of the French Intellectual Property Code.
Under this provision, any person who uses a mark enjoying reputation, for goods or services that are not similar to those designated in the registration, shall be liable under civil law if such use is likely to cause a damage to the owner of the mark or if such use constitutes unjustified exploitation of the mark.
For BENTLEY MOTORS it meant showing first that the BENTLEY marks were indeed well-known.
Surely such a demonstration would have been impossible or almost impossible as regards all goods and services covered by the BENTLEY trademark registrations. But one may have thought the demonstration would be rather simple as regards vehicles.
And yet the Paris Court rejected the reputation claim made by BENTLEY MOTORS considering there was not enough evidence to assess the degree of knowledge or recognition of the marks by the French public and to consider the marks were well-known.
Such a finding might be surprising. Maybe you do not drive a BENTLEY but surely you know about the BENTLEY mark and the BENTLEY logo.
So why such a decision?
It is really a question of proof. The Court reminded that a mark has a reputation when it is known by a significant part of the relevant public concerned by the goods and services it designates. To assess this condition, relevant factors to be taking into account are the market share held by the mark, the intensity, the geographical spread and the duration of the use of that mark, and the extent of the investment made for its promotion.
The amount of evidence provided by BENTLEY MOTORS did not convince the Court. But the decision was in fact predictable, at least for an experienced Trademark Attorney, for BENTLEY MOTORS failed to submit one key element of proof: a survey. Indeed, since the decision of the Court of Justice of the European Union in the GENERAL MOTORS case in 1999, more precisely since French courts interpret French law in light of Community law and Community case-law, surveys have become indispensable to evidence that a mark has a reputation.
Maybe BENTLEY MOTORS will have a second chance, if there is an appeal.
Nevertheless, the British motor company succeeded in obtaining cancellation of the marks JACK BENTLEY, BENTLEY JACK and B JACK BENTLEY on another legal ground, a subtler one, combining trademark law and public health regulations.
The French Public Health Code forbids indirect advertising for alcohol. And according to the Court, if an advertisement for a product other than an alcoholic beverage makes people think of an alcoholic beverage because of the mark being used in the advertisement, it must be considered as indirect advertising for alcohol and as such prohibited under Article L.3323-2 of the French Public Health Code.
BENTLEY MOTORS argued that the existence of the marks JACK BENTLEY, BENTLEY JACK and B JACK BENTLEY could be seen as a restriction or a potential restriction to the promotion and advertising of the BENTLEY vehicles because BENTLEY MOTORS’ advertisements could be interpreted as indirect advertising for the alcoholic beverages coming from the Chinese company.
The argument is kind of ironic considering the BENTLEY marks of the British company do cover alcoholic beverages (although they do not appear to be used for such goods).
But it is legally admissible and it was upheld by the Court. After finding that there was a likelihood of confusion between the BENTLEY marks and the marks JACK BENTLEY, BENTLEY JACK and B JACK BENTLEY, the Parisian justices decided to declare the latter invalid for potentially depriving BENTLEY MOTORS of using the BENTLEY marks.
If there is no appeal in the case, BENTLEY MOTORS will have to be satisfied with this outcome since no damages were granted by the Court, once again because of a lack of proof.