Operators of very popular websites with a descriptive address regarding their activities must develop a specific strategy for the protection of their rights if they are to have a chance to defend them effectively.
Indeed, the owner of a key-word match domain name will encounter difficulties to prevent its competitors using those words in their ordinary meaning. Much more, he would certainly have to face a counter-claim with a view to obtaining the cancellation of the trademark for lack of distinctiveness.
Recent case law illustrates this issue. It concerns the website www.seloger.com and the corresponding trademark registrations SeLoger and SeLoger.com (which is equivalent to websites such as www.homefinder.com or www.housing.com), providing access to real estate advertisements database.
The Court (1) cancelled the trademarks SeLoger and for all activities related to the areas of real estate and housing owing to the descriptiveness of the word element for services provided in order to rent, buy or sell properties. Besides, the presentation in white and red colors without claiming protection on particular shade(s) of red is not sufficient to make the logo distinctive.
However the Court decided that trademarks corresponding to the website address SeLoger.com and acquired distinctiveness by their intensive use from 1996 to their filing date in 2006, obviously convinced by the body of supporting evidence, such as opinion polls, audience rates of the website, high score of market researches.
Nevertheless, according to the Court, there is no likelihood of confusion between www.seloger.com on the one hand and www.seloger-pas-cher.com, www.selogermoinscher.com, www.se-logerimmo.com on the other hand.
What you should remember
- It is necessary for the operator of a website that starts to be successful to regularly keep audience statistics of his/her website, conduct surveys and market research to show his/her position and prove his/her reputation if appropriate;
- The trademark may be filed in a second time, when the sign has been used for a long time and can consequently be identified by the consumer as the commercial origin of the product or service marked;
- Using and/or filing a logo composed of a simple shape or of colors without claiming particular shades does not make the trademark distinctive;
- The distinctive character of a trademark is assessed at the date of filing and not at the date the revocation is requested;
- The trademarks to be opposed during infringement proceedings have to be carefully selected in order not to expose them to counterclaims for invalidity or revocation;
- The marks composed of descriptive terms, which became distinctive through intensive use, even if well-known, are protected against identical or almost identical reproductions but not against similar signs.
Despite all investments to promote a sign, the monopoly granted to the trademark must remain very limited to allow competitors to use a term necessary for their activity. This is the natural counterpart due to the freedom of trade and industry. The courts generally find fair balance between these competing interests.
(1) Court of appeals of Paris, hub 5, chamber 1, 14 October 2014, Janny B. v. Pressimmo On Line and Se Loger.com.