In February 2020, Prospect Excel attempted to bring a trade mark infringement and unfair competition action in France against an individual who published negative reviews of the company's products on the internet which (out of necessity) reproduced the company's trade mark. 

The Lyon Court of First Instance (referred to as the Tribunal Judiciaire since 1 January 2020) rejected all the claims made, notably indicating that trade mark law cannot be used to prevent criticism against an entity.

The facts

Prospect Excel – a company which specialises in the marketing of various goods – became aware that an online reviewer was publishing negative reviews about its business on the website www.avis73.fr. Prospect Excel therefore sent a cease and desist letter to the online reviewer requesting the latter to delete the litigious publications.

In view of the online reviewer's lack of response, Prospect Excel brought summary proceedings to have the disputed publications withdraw; the Lyon Court rejected the action. Consequently, Prospect Excel filed an action on the merits for trade mark and unfair competition acts. 

The company argued that the use of the trade mark SOLDOO and the domain name soldoo.com combined with the domain name avis73.fr constituted trade mark infringement, as well as unfair competition.

The decision

The Court rejected the claims made on the basis on trade mark infringement indicating that:

• the use of the SOLDOO sign is necessary to refer to the platform on which the claimant's products are marketed
• it does not mislead the average consumer into believing that the domina name www.avis73.fr/soldoo.com originates from the claimant's website, and
• no elements demonstrate that the defendant used the mark SOLDOO to capture part of Prospect Excel's customer base.

Consequently, the Court concluded that the defendant did not infringe the function of identifying the origin of the trade mark, and stating the contrary would allow the claimant to use trade mark law to prohibit criticism. The Lyon Court indicated that the fact that the defendant generated income from the traffic on their website as a result of the presence of advertising had no impact on this. 

The First Instance Court also rejected the claims based on unfair competition, as the claimant did not manage to show the misleading or excessive nature of the online reviewer's reviews. The French judges recalled the need to characterise a fault for the defendant to have civil liability. In this respect, no fault can be found if the information relates "to a subject of general interest […] provided that it is expressed with caution".

Comment

This decision is in line with the general trend of favouring reliable information for consumers. In particular, since 2016, online platforms must provide transparent information regarding online reviews (Law 2016-1321 of 7 October 2016 for a Digital Republic).

Case reference: Lyon Court of First Instance, 18 February 2020, Prospect Excel Company vs. M. X, No. 15/11035