The EU General Court has ruled in favour of the French State in a dispute with US based company, France.com, Inc. over the 'France.com' trade mark, concluding that the company cannot register the mark (above left) as an EU trade mark.
France.com, Inc. applied for a EUTM for the trade mark 'France.com' back in August 2014 with the words appearing next to an image depicting the Eiffel Tower and the French tricolor flag.
The mark covered three classes; 35, 39 and 41 including advertising services, travel information and online publications respectively.
In December 2014, the Republic of France opposed the trade mark application of France.com, Inc. due it claimed to the mark's similarity to an earlier mark registered by the French State in 2010, which also depicted the word 'france' in front of a backdrop of the French flag and the Eiffel tower (above right). The mark held by the French Republic is registered in classes 9, 16, 35, 39 and 41.
The original opposition by the French State was rejected by the Opposition Division. The decision was overturned by the First Board of Appeal of EUIPO in October 2016. The appeal was then referred to the General Court by France.com Inc.
France.com, Inc. made two distinct pleas in its application. The first was that the contested decision failed to take account of their rights, which they argued predated those of the French state. The second was that the analysis of the visual, phonetic and conceptual similarities of the signs at issue was flawed and that there was no likelihood of confusion on the part of the relevant public.
Although the mark filed by the French State was filed 4 years earlier than the filing by France.com, Inc., the US company had obtained and had been using the domain name 'France.com' for 21 years, since 1994. The trade name 'France.com, Inc. was registered in 1999 and had been used in France since 2002.
The Court rejected the first plea on the basis that firstly, the relevant territory in the case extends to the entire EU, not just France; and secondly, under relevant EU law, only the mark applied for and the earlier mark was relevant in an opposition dispute. The Court stated that where an applicant holds rights which predate the earlier EU mark, these rights should be protected by means of opposition or cancellation proceedings.
In coming to a decision regarding the similarity between the two marks, the Court considered three grounds: visual, phonetic and conceptual similarity.
The Court disagreed with the EUIPO on the matter of visual similarity, finding that the two marks ''have only a low degree of visual similarity" due to the predominant colour of black in the French State's mark as opposed to blue in the France.com, Inc. mark, the differences in the lettering, and the pentagon shape in France.com, Inc.'s mark.
However, it held that the two signs were almost identical phonetically owing to the fact that the '.com' element of the sign would be immediately recognised by consumers as referring to a website and they would accordingly refer to the mark applied for by the word 'France' only.
The Court also found the marks to be identical conceptually, as they both refer to France and the Eiffel tower and have the same overall structure. The Court held that the word element '.com' cannot alter the meaning conveyed by the word element 'France' and the '.com' element does no more than convey the idea that the goods are available for sale online. Further, the services covered by the marks had been found to be in part identical and in part similar to each other, a finding which was not disputed by the Applicant.
Accordingly, the Court concluded that there would be a likelihood of confusion between the two marks and thus the application for an EU trade mark was rejected.
The decision by the Court appears to contradict an earlier decision regarding the word mark MONACO, when it was found that the shortened name of a state was purely descriptive of the products and services and therefore not of distinctive character. In the current case, the shortened name of the French Republic, France, was distinctive enough to cause confusion with France.com even though the earlier mark had weak distinctive character.
The likelihood of confusion was also found despite the finding that in the 21 years of trading under the domain name 'France.com, there had never been any actual confusion amongst consumers regarding the services provided by the French State and France.com, Inc and the French State had actually ''supported and promoted'' the US company for years. The Court reiterated that the repute of a trade mark in assessing the likelihood of confusion is only relevant as regards the earlier mark.
Following the decision, Web.com have transferred the domain name 'France.com' to the French Republic, prompting France.com, Inc. to seek an order that the French State has engaged in cybersquatting and ''illegal seizure'' of the domain name. France.com, Inc. is now seeking injunctive relief requiring the transfer of the domain name and compensation for the lost business.
