Overheard in a Luxembourg bar:
Average Consumer “What a fabulous European sporting summer it’s been, especially in France, the sports event with the biggest live audience in the world was another classic of enduring rivalries, thrilling results and new heroes.”
General Court: "The athletics and breakdancing competition whose name we can’t mention?"
Average Consumer: "Nope. Le Tour de France! Three weeks cycling across France and Italy, the colourful peloton, Dutch corner on Alpe d’Huez, sunflower fields and hay bale sculptures?"
General Court: "Never heard of it"
Average Consumer: "You’ll be saying you haven’t heard of McDonalds next"
General Court: "The old guy with the farm?"
What's the issue?
Eyebrows have been raised by the recent decision of the EU General Court to reject Société du Tour de France's opposition to an application by German gym chain FitX Beteiligungs GmbH to register “Tour de X” for various clothing in class 25, toys, games and various sporting equipment in class 28 and sporting education services, training, entertainment services and sporting and cultural activities in class 41.
The case illustrates that no matter how well-known your brand may be – even one of Europe's most storied brands – the European trade mark complex will be sceptical, will put aside any real-world knowledge it may have and will require you to prove it all from scratch. In fact, it has to do so – the rules say that, when judging reputation, the EU IP Office cannot take into account facts known to it as a result of its own private knowledge of the market or conduct its own investigation.
Reputation, what reputation?
The Tour de France is without any doubt the most famous cycling event in the world. An annual men’s professional race now in its 120th year, it is held over three weeks each July, mainly in France though often with stages in nearby countries (Italy in 2024, Denmark 2023 etc). The race attracts the world's best cyclists, as winning even a single stage will make a rider’s career, and many of the participants become famous - some infamous. Its significance as a cultural event is recognised in French law, a 2004 governmental decree designates it as being an "event of major importance".
Combining a brutal race with images of the picturesque French summer of popular imagination, it attracts huge audiences and is shown daily on TV in many countries. Evidence in the opposition claimed 3.3 billion TV contacts for the 2007 Tour and survey results suggested that some 94% of Dutch respondents, 92% of French and 86% of Germans knew of the event.
It has the biggest live audience - ie spectators actually there - of any sporting event anywhere, easily beating comparative minnows like the World Cup or the Olympics because each stage is lined with crowds, there not only for the riders but for the miles-long caravan of sponsors and team vehicles which accompany them. There is also a women’s version, known since 2022 as Tour de France Femmes, which is rapidly growing in popularity.
The Tour de France is a brand really only known for the cycling race - there is comparatively little branded merchandise, for example. But the race and all that comes with it is a huge commercial ecosystem. For many months ahead of the race there are build-up events, with frequent specialist and general media coverage of the teams, their sponsors and riders, while towns afforded the honour of being on that year's route spruce themselves up and seek to make the most of their moment in the international spotlight.
Similar multi-stage professional cycling races have more recently become common in other countries, some with a “Tour de …" title despite French not being their first language, as an allusion to the Tour de France (there was even a "Tour de Yorkshire"), but none matches its cachet or huge audience. The Tour de France itself is frequently referred to by commentators, participants and fans as "Le Tour" or "the Tour".
The Court decides
The opposition was based on several TOUR DE FRANCE word and logo marks, and on two grounds: a likelihood of confusion, and taking unfair advantage (for two marks) or damaging the distinctive character or repute of a mark with a reputation (in respect of the class 41 rights).
The opposition faced an uphill battle from the start, with the EUIPO taking the approach that everything about the earlier rights had to be proved, and where evidence was accepted, it was often in grudging terms. The Opposition was rejected by the EU IP Office and the Board of Appeal held that there was no likelihood of confusion or risk to the distinctive character or repute of the Tour de France marks. The case then reached the General Court, which also rejected the opposition.
Why did the Court find no likelihood of confusion?
Similarity of goods and services was found. However, similarity of the marks was not. In breaking the TOUR DE FRANCE marks down, it was held that there was no dominant element. When then looking at each element, none of them, "tour" or "tour de" or "de France", were distinctive. In comparison, the "X" was the dominant element of the applicant's mark. Because the common elements between the parties' marks had such low distinctiveness, there was a low degree of similarity between the marks. There was held not even to be any conceptual similarity, although it was accepted that both would be understood as referring to a competition.
Despite the Tour de France's fame described above, the word mark was held to have only an average level of distinctiveness for cycling competitions. What distinctiveness there was, applied to the earlier mark as a whole rather than the "Tour de" element.
What about the reputation-based claim?
The opponent relied only on its reputation in respect of organising sporting competitions and not the more general entertainment services. The Court agreed with the Board of Appeal that reputation had been established in class 41 but not to a high degree - in particular, not in relation to the "Tour de" element. Even if the claim to a very high level of reputation in the mark TOUR DE FRANCE was accepted, the relevant public would not make a link between the marks.
Takeaways
The outcome in this case may seem strange to those outside the arcane world of trade mark law. Huge numbers of consumers recognise and associate the TOUR DE FRANCE brand with the opponent's event, and that also goes for "Le Tour", "the Tour" and any sporting use that starts "Tour de". But the EUIPO felt constrained to focus on the common meanings of the individual words and seems to have been swayed by there being later and lesser contests which also use "tour de" as part of their branding.
Whether the decision is wrong or right, this is the system brands have to grapple with and the salutary lesson from it is to take nothing for granted, not narrow your arguments too early and treat every case as if you have to prove everything.
