The French Highest Court (cour de cassation) has recently reaffirmed the well-established principle that “the likelihood of confusion must be globally assessed, with regard to the content of the trademark registrations regardless of the consumer of the designated goods and the conditions under which the trademarks are used or the goods are marketed”. (Cour de cassation, chambre commerciale, 23 juin 2015, pourvoi n°14-13011)
In this case, a company commercializing vitamin products for kids under the trademark « Min’ours » (“our” meaning “bear” in French) sued for trademark infringement a competitor for the sale of similar products under the trademark in colors « Kid’ours ».
The Court of Appeal of Rennes considered that the similarity between the marks was diminished by the differences in the colors and the dactylography, as well as by the differences between the packaging of the goods at issue and the way the trademarks were displayed on such goodsverturning this judgement, the French Court recalled in a very clear decision that only an in abstracto assessment of the signs shall be conducted for the determination of the likelihood of confusion. This decision is the line with the Court’s traditional jurisprudence. In compliance with French law, the scope of the protection granted to the trademark is limited to the contents of the application filed with the Office. Use or packaging of the products should have no influence on the Court’s findings on the issue of likelihood of confusion. By this decision, French Supreme Court shows it plays strictly its role of gatekeeper of the trademark system where rights are acquire through registration, not use.
The decision Specsaver of the Court of Justice of the European Communities of 2013 had opened a door to the inclusion of the actual use of a trademark when assessing the likelihood of confusion. This decision hold that “where a Community trademark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.”
However, the facts of the particular matter were different. Besides, packaging and actual use of the marks are traditionally examined by the courts in the light of unfair competition or free riding.