Velib’ is a famous French brand for self-service bicycles that was launched by the City of Paris on 15 July 2007. It is very popular among tourists. Velib’ was the first of a kind and has been duplicated by many cities across the world since then.
The offer was followed by Autolib’ in 2011, an equivalent of Velib’ services for cars. And for scooters, there is…? Cityscoot!
Indeed, the Court of Appeal of Paris (26 May 2017, Paris City / Scootlib France and others) has cancelled the trademark Scootlib’Paris filed in 2011 by the City of Paris for infringement of the earlier mark Scootlib, filed on 9 October 2007 by a Luxembourg company for competing products and services.
A reminder of the background is helpful to get the situation clear. The mark Velib’ was filed on 19 February 2007 and the domain names velib.fr, velib.org, velib.biz, velib.info and velib.eu registered on 28 February 2007.
However, in November 2007, when self-service scooters are evoked by the press under the name Scootlib, the mark has already been filed by a Luxembourg company, early October.
What then? The sign Velib’ is evocative, and therefore weakly distinctive for self-service bikes. Velib’ is the combination of the contraction of “vélo” (which means bike) and “liberté” (for freedom).
The advertising campaign for Velib’ was extremely successful and helped strengthen the knowledge of the mark by the public, hence its scope of protection. As soon as 2011, thanks to its reputation, the Velib’ trademark was successfully opposed to new trademark applications such as CITYLIB, BOATLIB, ROUTELIB, VESPALIB and VOGLIB (although they were visually and phonetically dissimilar).
However, back in October 2007 when the trademark Scootlib was filed and began to be used, the situation was quite different. The trademark Velib’ was to be considered as weak and not particularly known. The Court of Appeal then considered that the visual and phonetic differences between Velib’ and Scootlib could not be compensated for by the intellectual similarities between the signs. Furthermore, no fraudulent intent by the applicant could be evidenced.
Besides, the Court declared inadmissible the demands based on the Velib’ mark, since the City of Paris filed the lawsuit more than 5 years after being aware of the filing and use of the contested trademark Scootlib. The cease and desist letter the City sent in 2010 did not suspend this limitation period (see our article on acquiescence or tolerance to infringement of trademarks in France).
This is a classical application of trademark law. Autolib’ was launched only on 2011, there was no family of marks in 2007-2008. The trademark Scootlib’Paris registered in 2011 by the City of Paris is therefore canceled and the trademark Scootlib registered in 2007 is validated.
As far as trademarks are concerned, anticipation remains the key word. Occupying legal space, registering signs likely to be used in the short or medium terms as trademarks and domain names is the safest strategy.