1 November 2019
Creating confusion with a competitor's trade mark can not only be brought on the ground of trade mark infringement in France, but also on the ground of unfair commercial practices.
In accordance with the European Directive No. 2005/29 relating to unfair commercial practices of 11 May 2005 and Article L.121-2 of the French consumer code, a commercial practice shall be considered misleading, and therefore unfair, if it causes or is likely to cause the average consumer to take a transactional decision that he would not have taken otherwise.
This is especially if it involves the marketing of a product which creates confusion with the trade mark, the trade name or other distinguishing signs of a competitor.
In 2011, a French company, GCM, filed an application for the registration of the trade mark COUREAU & COUREAU PETRUS LAMBERTINI MAJOR BURDEGALENSIS 1208 in class 33 for "wine of appellation of origin".
CHATEAU PETRUS, the famous company producing Pomerol wine, filed an opposition against this trade mark application based on its prior trade mark PETRUS registered for 'wine'.
The French Trade Mark Office rejected the opposition, considering that the term PETRUS could not be regarded as the dominant element in the contested sign, and that the existence of seven verbal elements and a date in the contested sign resulted in significant differences in the structure and the rhythm of the two signs.
The Office decided that the signs produced a different overall impression so that there was no likelihood of confusion between them.
A few years later, GCM used its trade mark on the label of its wine bottles as follows:
GCM presented its wine on its website as a "second wine" of PETRUS.
CHATEAU PETRUS decided to file a criminal complaint on the ground of Article L.121-2 of the consumer code arguing that the presentation of the product was misleading for the consumer as it suggested that the wine sold by GCM was CHATEAU PETRUS' second wine. The case was referred to the Bordeaux Criminal Court, which found GCM guilty of misleading commercial practice.
This decision was then overruled by the Bordeaux Court of Appeal, which considered that the marketing of a wine under the trade mark COUREAU & COUREAU PETRUS LAMBERTINI MAJOR BURDEGALENSIS 1208, presented as a "second wine" of PETRUS, was not misleading. CHATEAU PETRUS appealed to the French Supreme Court (Cour de Cassation).
In a decision dated 12 June 2019, the Cour de Cassation confirmed the decision of the Court of Appeal. The Court held that even if the contested trade mark was cleverly presented to emphasize the name PETRUS LAMBERTINI, the sign is sufficiently complex for the consumer not to be certain that this wine comes from, or is associated with, the famous CHATEAU PETRUS.
The Court also noted that even if the average consumer does not know that PETRUS is a wine of the Pomerol appellation, they can easily check this. They will therefore be alerted by the fact that the contested label refers to the Bordeaux appellation and not the Pomerol appellation. They can also easily verify that CHATEAU PETRUS does not produce a second wine.
The Court further pointed out that the average informed consumer knows how expensive good wines are. Even if it is possible to purchase second wines at affordable prices from famous vineyards (eg wines sold at a price of 10 euros per bottle), this is certainly not the case when it comes to wines from an exceptional vineyard such as CHATEAU PETRUS.
The Court concluded that, even if the defendant made a clever use of its trade mark by emphasizing the name PETRUS LAMBERTINI with the clear objective of attracting the customer's attention, this does not constitute a misleading action within the meaning of the French consumer code.
Ironically, in this case, it seems that it is the great reputation of Chateau Petrus that led the judges to consider that the average consumer would not confuse the signs. Indeed, taking into account this notoriety, the average consumer would not ignore the actual characteristics of a PETRUS wine as well as its price – or at least they would have checked this – and therefore, they could not be deceived under the circumstances.
The approach adopted in this case on the ground of unfair commercial practice is therefore different from the one adopted by French judges on the ground of trade mark infringement, where the great reputation of a trade mark is usually considered as a relevant factor in assessing the likelihood of confusion. According to French courts, such reputation confers on the trade mark a particular, distinctive character.
This decision was probably not well received by CHATEAU PRETUS. It is surprising to note that the Court did not consider that the behavior of the defendant constituted an unfair practice, even though it clearly acknowledged the defendant's deliberate intention to use the PETRUS reputation in order to attract the customers' attention, and further stated that this initiative may have convinced some consumers to buy the wine when it would have been difficult to convince them otherwise.
Case ref: Cour de Cassation 12 June 2019 n°18-83298