General Court: France.com cannot be registered as an EU trademark
On 26 June 2018, the General Court (GC) upheld the decision of the Board of Appeal (BoA) and confirmed that the word and device trademark “France.com” cannot be registered in the EU due to a likelihood of confusion with the earlier trademark “France”.
I. Background of the case
On 9 August 2014, an American company FRANCE.COM, Inc. filed an application for registration of the EU Trademark No. 013158597 (word/device mark) for the services in the class 35 (advertising services), class 39 (services related to travel) and in the class 41 (on-line publications).
The application was then later, on 5 December 2014, questioned when the French Republic filed a notice of opposition. The opposition was based on its prior international registration No. 103244 (word/device mark) which was in 2010 designated for the area of the European Union. This earlier trademark was registered for goods in the class 9 (apparatus and media for recording) and 16 (printed matter) and further for services in the class 35 (advertising services) and 41 (cultural activities and on-line publications). The opponent claimed likelihood of confusion set out in the Article 8 (1) b) Regulation No. 207/2009 (now Art. 8 (1) b) Regulation No. 2017/1001).
On 13 October 2015, the Opposition Division firstly rejected the opposition. The opponent appealed against this decision. On 20 October 2016, the Board of Appeal came to the opposite conclusion than the previous instances and annulled the decision of the Opposition Division. The BoA held that the marks are overall highly similar. The decision was based on following founding:
- the goods and services in question are in part identical and in part similar
- the marks are registered for the same territory,
- the signs have an average degree of visual similarity and are phonetically and conceptually identical.
France.com then brought the action to the General Court and further requested that the GC refers questions about this case to the CJEU for a preliminary ruling.
II. Ruling by the General Court
On 26 June 2018, the GC came in its decision (T-71/17) to the conclusion that the sought trademark “France.com” cannot be registered due to likelihood of confusion with the prior registered trademark “France”.
The GC answered two main questions concerning this case:
a) Likelihood of confusion - similarity of the signs in question?
The GC emphasized that the global assessment must be based on the overall visual, phonetic and conceptual impression of similarity given by the signs and that important by such analysis are the distinctive and dominant elements of each sign. Likelihood of confusion is then given, if the relevant public considers the signs in question to be too similar.
As depicted above, the marks are a combination of a word and of a figurative element. Regarding the case-law, where a sign is composed of a word and figurative element, the word element is given the primary attention as the average consumer will more easily refer to the goods and services by name than by describing the figurative part of a sign.
In the case at hand, both signs have the same key word element “France”, which is according to the GC to be understood as a shortened name of the official name of a public entity - French Republic. Next, the earlier mark also contains a depictured Eiffel tower, the later one a colored pentagon as well as the abbreviation “.com” in addition to the word element “France”.
The Court ruled that the marks as a whole share only a low degree of visual similarity as the dominant color and the figurative elements are different. Further, the word element is also not completely the same as the later mark has an added “.com”.
Concerning the phonetical similarity of the signs, the Court found the signs to be almost identical. The signs only differ in the word part “.com”. This part is easily noticed by the consumers as a reference to a website and is therefore usually not attended to. As a result, most consumers will refer to the mark applied for only by the word “France”, which is then identical with the earlier mark. When examining a phonetic reproduction, only word elements need to be taken into account as the figurative elements are of more importance when analysing the signs visually.
Finally, also from a conceptional point of view the signs were determined to be identical as they both consist of colors, word and figurative elements that refer to the same concept - to the country - the French Republic.
Further, the Court found that the goods and services in question are partially identical and in part similar.
In light of the above-mentioned examination and given the particularly high degree of phonetic and conceptual similarity between the signs, the GC held that there is a likelihood of confusion within the meaning of the Article 8 (1) b) of Regulation No. 207/2009 (now Art. 8 (1) b) Regulation No. 2017/1001).
b) Request to refer the case to the CJEU
Next, the Court rejected the applicant´s plea to refer the case to the CJEU for preliminary ruling with the argumentation that the procedure under Art. 267 TFEU is an instrument for cooperation between the CJEU and national courts, and is therefore not admissible to the GC.
For a better insight on this topic, read the whole decision here.
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