The saga of the trademark BATEAUX MOUCHES has been going on for over 10 years and it must be recognised that the Compagnie des Bateaux Mouches is constant and persevering in its efforts to obtain Community protection over its mark.
By two final decisions (1), the Court of First Instance denied any distinctive character neither per se nor acquired through use to the trademarks BATEAUX MOUCHES and in relation with the services of transport by tourist boats and pleasure craft, amusements, providing of food and drink on land or on board tourist boats and pleasure craft, stating that those words are generic for tourist trips on the River Seine.
Recently, the Court upheld (2) the decision of the Board of appeal refusing the registration of the trademark BATEAUX MOUCHES this time for the services of building of ships, more specifically of building of boats for tourism and the component parts thereof. The reasons and the decision are in line with its case-law:
- The mark BATEAUX MOUCHES is composed of words in the French language. Regarding the concerned services, the relevant public is French-speaking river craft manufacturers and shipbuilding professionals, well informed, observant and circumspect, acting in the territory of the Union, and not the non-French-speaking foreign tourists.
- Given that BATEAUX MOUCHES can be easily understood by the relevant French public as an indication of a means of navigation and of transportation of tourists, it follows that the same public might think that the sign also designates the construction of river ships able to transport tourists.
- The applicant still failed to provide evidence that the relevant public, the river craft manufacturers in France, Belgium and Luxembourg, were aware that the sign BATEAUX MOUCHES is a distinctive sign for shipbuilding services.
- The mark is not distinctive applied to the services for the building of ships, more specifically for the building of boats for tourism and the component parts thereof.
What you need to remember
The trademark is not an intangible property right. It must be defended against any use by third parties, commercial or not, which could weaken or dilute its value, which implies a specific and active watching.
However, if such an active policy of defending one’s mark against all abusive use may prevent it from becoming the common name in the trade for a product or service in respect of which it is registered, it cannot make a descriptive sign a valid trademark.
Sometimes a generic sign can be registered by trademark offices. It is then possible that this sign acquires distinctiveness because of its intensive use but the efforts and the business investments must be significant and consistent (3).
Cases exist (4) but remain rare.
(1) Judgment of the Court of First Instance of 10 December 2008, case T-365/06, Compagnie des Bateaux Mouches v/ OHIM and Castanet and Judgment of 21 mai 2014, case T-553/12, Compagnie des Bateaux Mouches v/ OHIM.
(2) Judgment of the Court of First Instance of 26 March 2015, case T 72/14, Compagnie des Bateaux Mouches v/ OHIM.
(3) ECJ, 4 May 1999, Windsurfing Chiemsee, C-108/97 and C-109/97: Factors capable of demonstrating the mark’s distinctive character are the market hare held by the mark, the intensity, geographical spread and duration of the use of that mark, the size of the investment made by the company to promote it, the proportion in the relevant fields of those who identify the product or service as coming from a particular undertaking because of the mark.
(4) See decision about the mark VENTE PRIVEE (or PRIVATE SALES) from the Court of Appeals of Paris, 31 May 2015, case 13/23127, SAS VENTE-PRIVEE.COM v/ SARL SHOWROOMPRIVE.COM.