This month, we have selected French case law focusing on the comparison of the signs and the different criteria used by judges and the INPI (French Trademark Office) to assess whether or not there is a risk of confusion between the marks for the relevant public.
Different situations have been chosen.
Identical reproduction of a part of the trademark in a complex sign
There is a likelihood of confusion between the trademarks when the common element is placed on first position in both marks, and when it keeps its distinctiveness in both signs:
- BRIN 2 FORME is similar to (1);
- AH MARQUE is similar to AH EXCELLENT, AH being the distinctive and dominant element in both signs (2);
- is similar to NEXT (3);
- L’OFFICIEL DE LA MAISON is similar to L’OFFICIEL DE L’IMMOBILIER (4).
Aural differences linked to the expected pronunciation of the signs (in foreign language)
How the signs will be pronounced must result clearly from the way the trademark was filed. The assertions of the applicant or opponent, or the current use of the trademarks, cannot be taken into account during opposition proceedings.
In the opposition proceedings 01NET v/ LABORATOIRE 01 SANTE (5): “the world NET does not confer to the previous trademark an English aspect which would lead the consumer to pronounce it one net while the contested trademark would be read as “LABORATOIRE zero un SANTE”. It is most likely that the common part “01” will be read the same way in both signs by the relevant public”.
In the case FIDME v/ YOU FID (6): “Intellectually, it may be true, as pointed out by the opposing party, that the term YOU in the disputed sign can be perceived by the consumer as an English pronoun, but there is no basis to assert that the same applies to the element “ME” of the earlier mark; FID and ME being attached without any special calligraphy, the sign FIDME will be considered as whole”.
According to article L.713-6 of the Intellectual Property Code, “the registration of a mark shall not prevent use of the same sign or a similar sign as a company name, trade name or signboard, where such use is either earlier than the registration or made by another person using his own surname in good faith […]. However, where such use infringes his rights, the owner of the registration may require that it be limited or prohibited”.
This provision does not allow the registration by the homonym of its surname as a trademark.
In the case Lucien ALBRECHT v/ Cécile ALBRECHT (7), the reproduction of the surname ALBRECHT creates a likelihood of confusion. The argument that this name is not rare (466 hits in a public records database) is not sufficient to demonstrate that the surname ALBRECHT is widespread in France and descriptive for wines.
ALBRECHT will be perceived as the family name in both signs and therefore as the dominant element of both marks taken as a whole.
(1) Opposition decision 12-4491 / PAB of 17 April 2013 confirmed by the Court of Appeals of Paris, 13 December 2013, Brin de Forme v/ Brin de Jour, opposition upheld.
(2) Opposition decision 13-2549 / VR of 17 January 2014, AH MARQUE v/ AH EXCELLENT, opposition upheld.
(3) Opposition decision 13-3173 / HT of 31 December 2013, NEXT v/ NEXT2U, likelihood of confusion between the signs but products different, opposition rejected.
(4) Opposition decision 13-3579 / HT of 07 January 2014, L’OFFICIEL DE LA MAISON v/ L’OFFICIEL DE L’IMMOBILIER, opposition upheld.
(5) Opposition decision 13-3332/ FBR of 3 January 2014, 01NET v/ LABORATOIRE 01 SANTE, opposition upheld.
(6) Opposition decision 13-1971 / OT of 12 December 2013, FIDME v/ YOU FID, no likelihood of confusion between the signs, opposition rejected.
(7) Opposition decision 13-2788 / CBO of 12 December 2013 Lucien ALBRECHT v/ Cécile ALBRECHT, opposition upheld.