The use of a trademark within a family of trademarks cannot be invoked as a basis for justifying the use of another trademark belonging to the same family.
The company Otech, registrant of the French trademarks “Micro Rain” and “Big Rain”, having been made aware of the use of the signs “Micro Rain” and “Big Rain”, has served a formal notice to the companies Ocmis and Irtec to cease the use of these signs. The latter companies have then brought an action against the company Otech for the forfeiture of its rights on its two French trademarks and all relating products, in accordance with Article L714-5 of the French Code of Intellectual Property (Code de la Propriété Intellectuelle) which provides that “The owner of a trademark who, without good reason, has not made genuine use of his trademark in connection with the products and services covered by the registration for an uninterrupted period of five years may see his trademark cancelled”.
The Court of Appeal of Pau (Cour d’Appel de Pau), in a decision of January 2014 (CA Pau, 31 January 2014, No. 14/439), declared the forfeiture of the rights of the company Otech on its French trademark “Micro Rain” for all the products for which it was registered.
The company Otech, considering that the genuine use of a trademark of the French territory can be established by the use of its varied form, itself registered as a trademark, as long as its initial distinctive character is not altered, filed an appeal with the French Supreme Court (Cour de Cassation). Indeed, the company Otech argued that the use of its trademark “Mini Rain”, which only differed from the contested trademark “Micro Rain” by elements which did not alter its distinctive character, stood as evidence of the use of the said trademark “Micro Rain”.
Confirmation of appeal decision declaring cancellation
The French Supreme Court (Cour de Cassation) was then faced with the question of whether the use of a trademark, in the particular context of a trademark family, justified the use of another trademark belonging to the same family.
The French Supreme Court (Cour de Cassation), in its decision of 19 January 2016, applying the principles set out by the Rintisch decision of the Court of Justice of the European Union, confirmed the judgement of the Court of Appeal of Pau (Cour d’Appel de Pau) regarding the decision to cancel the rights of the company Otech.
Application of the European case law “Rintisch”
Indeed, the Court of Justice of the European Union, interpreting Article 10, paragraph 2, subsection a), of the Council directive 89/104/CEE of 21 December 1988 while reconciling the national laws of the Member States regarding trademarks, has emphasised that in the particular context of a family or series of trademarks, the use of a trademark cannot be invoked as a basis for justifying the use of another trademark (C-553/11, Rintisch, 25 October 2012, ground 29). It should be noted that this solution has not always prevailed and that the case law has often fluctuated on this matter.
In the judgement in question, the company Otech argued that the trademark « Micro Rain » belonged to a family of sixteen trademarks, all of them constructed around the term « Rain » used as a suffix or prefix. However, it could not, in order to avoid the cancellation of its rights over the trademark « Micro Rain », invoke the use of the trademark « Mini Rain », even if these trademark marques would belong to the same family or series. On this strict legal ground, the dismissal of the appeal is legally justified.
The cross-border nature of domain names raises the issue of the determination of the jurisdictionally competent court in cases of infringements caused by the registration or use of these signs.
How to appreciate the destination of a website? Use of the circumstantial leads method
According to the theory about the focalisation, the French judge is competent where the website in question is targeted to the French public, not merely when it is accessible from France (Com. 11 January 2005). This solution has been restated many times (Com. 29 March 2011; Com. 3 May 2012). The method takes into consideration several leads, such as the extension of the domain name, the language of the website or even the destination of deliveries. However, these criteria taken separately are not relevant.
This circumstantial leads method has been used by the Court of Justice of the European Union, in a decision of 12 July 2011, where it interpreted on a case-by-case basis several relevant leads in order to determine the target of a website.
Foreign ccTLDs and competent jurisdiction
However, the issue arises in case of foreign ccTLDs, which are national extension (<.ch> for China, <.de> for Germany, etc.). The determination of the target is therefore more complex, evidence as to the targeting of the French public must be set forth. In its judgment of 14 January 2016, the TGI (Tribunal de Grande Instance) of Paris held that an Italian website offering a French translation of its contents, as well as the contact details of one of its distributors located in France targeted a French public, with which it shared a significant and sufficient link. The court based its decision on Article 5-3 of the Community Regulation n° 4/2001 which provides that “A person residing on the jurisdiction of a Member State can be sued in another Member State : […] 3) Regarding unlawful or quasi-unlawful matters, before the local tribunal where the offence was committed or may be committed”. In the present case, the TGI (Tribunal de Grande Instance) of Paris is therefore competent in cases relating to the use of the trademark of a French company on a .it website.
A contrario, the Court of Appeal of Nancy (Cour d’Appel de Nancy), had, on 13 December 2010 refused to recognise the competence of French jurisdictions in a case concerning the website <carbone.nl> on the grounds that it was not in French language and did not offer products for sale in France.
It is therefore necessary to be careful and take into account all possible leads in order to identify the target of an Internet website, and thus the competent jurisdiction in case of dispute.
The Paris Court of Appeal (Cour d’appel de Paris), in its decision of 5 February 2016, held that the trademark Colink’In did not constitute an infringement to the trademark LinkedIn. The court sentenced the companies LinkedIn France and LinkedIn Ireland to pay 15 000 € to the company Colink’In in respect of its legal costs incurred. LinkedIn alleged an infringement by reproduction of the verbal and complex Community trademarks LinkedIn with regards to the filing, the registration and the use of the trademark CoLink’In, as well as the corporate name, trade name and the eponymous brand.
Trademark infringement’s appreciation: regarding the overall similarities
The Commercial Chamber of the French Supreme Court (Cour de cassation), by a decision of 25 March 2014, had previously had the opportunity to state the principle according to which an infringement should be construed with regards to overall similarities. The French Supreme Court (Cour de cassation) had stated the criteria for the determination of the infringement of a trademark in terms of a potential risk of confusion in the mind of the consumer. In this decision, the French Supreme Court (Cour de cassation) had restated the principle for the general interpretation of the risk of confusion and outlined: with regards to intellectual property, any infringement is construed from overall similarities and not from small differences (Cass. Com., 4 Jan 1982, Ann. propr. ind., p.244).
Furthermore, the Court of Justice of the European Communities, which had set its case law through three fundamental decisions, held that the infringement of a trademark is construed with regards to the overall idea given by a brand sign (CJCE, 11 Nov. 1997, aff. C-251/95, Sabel ; 29 Sept. 1998, aff. Canon ; 22 June 1999, aff. C-342/97, Lloyd). Therefore, not only should the trial judges set out the differences, but they must also find out whether the existing similarities do not create a risk of confusion.
In the present case, the Paris Court of Appeal (Cour d’appel de Paris) held that a consumer could not mistake the nature of the products and services offered by each party, after having analysed the construction, pronunciation and perception of the opposed brand signs. The pronunciation of the term Linkedin did not lead to a risk of confusion between the two brand signs and phonetical similarities seemed trivial. Indeed, in France “it cannot be certain whether the targeted public would pronounce the said trademark as Lin[k]din instead of Link[eu]din or Link[é]din”.
Finally, while the court concedes that LinkedIn is a reputed trademark, it does not recognise, however, “that the contested brand sign had negatively affected the identity of the trademark resulting in a decline in its market value, nor that it caused any tarnishing or blurring”. It therefore rejected LinkedIn’s claims for damages on these grounds against the respondent company.
Today, the 8th of March, Dreyfus joins in the celebration of the extraordinary power and strength of women all over the world. Today, we recognize the women of the Dreyfus team, our colleagues, families and partners, and their outstanding dedication to the global community.
“This should bring reinforced legal protection not only to the users of Facebook, but also to those who use other online services for which general terms include similar stipulations”
Nathalie Dreyfus, Founder, Dreyfus
No user of the internet can avoid being bound by the general terms and conditions of social media. These conditions determine the rules of interaction between the provider and user of a service. As to social media, these provisions will provide for IP rights, the use of personal data, and the content created by users, among others.
By allowing access to the social media network, the user accepts all of the provisions of the general terms and conditions of use, without being able to negotiate them effectively.
Questions must be asked of the binding force of these rules. What about their validity under French law?
The judicial nature of social media terms and conditions
Terms and conditions are, first of all, a contract determining the rules of the game on the social media network. It forms the law of the parties on the platform, and in France, Article 1134 of the French Civil Code applies: “Agreements legally entered into operate as law for those who made them.”
The particular formal requirements of this type of contract, namely the fact that the terms and conditions are agreed upon online, does not challenge their validity. It is an online contract.
Finally, the terms and conditions are pre-formulated standard contracts in the sense that, in practice, they do not allow the user to negotiate the terms of the contract.
Therefore, the terms and conditions of social media are binding contracts. However, in practice, the questionable accessibility and lawfulness of the clauses in the terms and conditions of social media can raise issues about their binding force.
The reliability of terms and conditions
Terms and conditions are often criticised for being hard to understand. Indeed, in practice these conditions are often reproduced in documents other than the contract and it is not always easy to prove that the contracting party knew of and accepted them. The terms and conditions are deemed to be acknowledged and accepted only if a clause in the contract makes reference to them.
For certain conditions pertaining to the protection of personal data, the accessibility is even more tenuous because the policies or confidentiality requirements can be opened only by clicking on a link in the terms and conditions.
Hence, this system of clauses can be compared to a Russian doll: the opening of one condition leads to another, and so on.
Furthermore, the terms and conditions of social media are modified on a regular basis, but that does not necessarily mean that the users are expressly informed about these modifications.
Some social media say they will only bring modifications that they deem to be ‘substantial’ to the attention of users. Hence, the lack of access to the content of terms and conditions and the lack of transparency concerning their modification seem to breach the protective provisions of French consumer law.
The lawfulness of social media terms and conditions
This is an issue when it comes to the usage licence of intellectual property rights as well as to clauses pertaining to personal data.
Social media are not unaware of the contents posted by the user and terms and conditions secure a licence for the use of this content. The issue is on the validity, under French law, of these clauses that secure the licences for the use of this content.
A May 2012 judgement of the first instance court given in TFI v YouTube indicated that the licence found in the terms and conditions of YouTube is questionable under copyright law because the temporal and spatial limits of the free transfer are not specified.
In addition, with regards to the formal requirements and compulsory indications imposed by Article L 131-3 of the French Intellectual Property Code, the shortcomings in the identification of the rights that are the subject of the licence, or even of the comprehensive licences for future works, are questionable under copyright law yet nonetheless feature in the licences for the use of social media.
It therefore seems that the licences for the use of content are not in line with the statutory requirements of French law.
When it comes to personal data, terms and conditions are criticised for their lack of transparency on the use of personal data and its appropriation by social media.
Some clauses, including those that provide for the conservation of personal data of the user for an indeterminate period, or for a period exceeding the time required to process the operation, are deemed to be abusive.
The potential abusiveness of T&C clauses under French law
The clauses that are presented here create a significant imbalance between the rights and obligations of the parties. Hence, public and consumer associations regularly target these clauses that they term as ‘abusive’.
The commission in charge of dealing with abusive clauses, through an order issued in November 2014, recommended eliminating the various clauses that are found in social media terms and conditions.
This commission, which falls under the remit of the minister responsible for consumers, issues recommendations to eliminate or modify clauses that have, as their purpose or effect, the creation of a significant imbalance between the rights and obligations of the parties to the contract that is detrimental to the amateur or consumer.
The majority of these clauses are about the protection of privacy and personal data.
The commission recommends that clauses, having as object or effect, the clarity of the contract, the formation of the contract, intellectual property rights or even the modification of the terms and conditions, be removed from the contracts proposed by the providers of the social media.
The recommendations of the commission only serve as guidance. However, their impact should not be underestimated because they can be an implicit basis for the courts when they assess the abusive nature of a clause in a legal dispute.
In practice, until very recently, it was not possible to file class actions in France. The Hamon Law of March 2014, which introduced class actions for the first time in the Consumer Code, will undeniably give consumer associations the right to seek compensation for consumers who have, as common ground, social media that have breached their legal or contractual obligations.
The position of social media terms and conditions when it comes to conflicts of jurisdiction
The rules applicable to legal and jurisdictional disputes are in conflict with the terms and conditions of social media and are currently attracting the attention of French case law and authors.
In 2012, the Court of Appeal of Pau explained the scope of application of the terms and conditions in relation to an action against Facebook.
A user was contesting a clause in the terms and conditions that confers jurisdiction to courts in California.
The judges had ignored the application of Facebook terms and conditions, taking into consideration that they were written in English and that the font style made the text too difficult to read.
Given that the conditions imposed by Article 48 of the French Code of Civil Procedure, which is ‘loi de police’ (a mandatory rule with which compliance is regarded as crucial by a country for safeguarding its public interests, such as its political, social or economic organisation, to the extent that they are applicable to any situation falling within their scope), had not been respected, the internet user could not have consented to a full awareness of the facts, and so the clause conferring jurisdiction was null and void.
This case therefore confirms that the parties to a contract can choose which courts will have jurisdiction but the choice of the parties can sometimes be contrary to the provisions of ‘lois de police’ that must necessarily apply.
More recently, an order of the High Court of Justice of Paris, issued at the outset of the trial, deemed the jurisdiction clause found in Facebook’s terms and conditions to be null and void after the judge found himself competent to decide on this plea in before commencement of the litigation, which concerned the abusive nature of the clause.
This reasoning differs from the one used three years earlier by the Court of Appeal of Pau.
Indeed, the court did not rely on the prohibition of the abusive clauses but relied on the fact that the jurisdiction clause is extremely hard to identify and unclear, especially since it was written in English at the time.
The debate here is on the concept of abusive clauses. This solution should bring reinforced legal protection not only to the users of Facebook, but also to those who use other online services for which general terms include similar stipulations.
Nevertheless, this solution applied does not solve all the practical difficulties faced by the users of social media who want to have their rights recognised before the French courts.
Indeed, in practice, many obstacles limit opportunities to go before a judge, such as the extreme dependence on social media users accepting the pre-formulated standard contracts of these platforms, or the low financial implications of these legal disputes, which are too insignificant to justify a long and costly trial.
One should however congratulate the French courts for standing up to the providers of social media and ensuring that the fundamental values of French law are enforced. IPPro
Between 1954 and 1989, the newspaper Le Figaro published a magazine under the trademark “Jours de France” registered on June 16, 1988. As of 2011, Le Figaro relaunched the publication as an online magazine under the domain name <joursdefrance.lefigaro.fr>. Only on August 7, 2013 did Le Figaro also relaunch the distribution in hard copy.
After receiving a letter of formal notice from the company Entreprendre, owner of the French trademark “Jour de France” registered on February 25, 2003, Le Figaro sued Entreprendre in a counterfeit action for trademark infringement. Thus, Entreprendre argued the revocation of Le Figaro’s rights on its trademark for non-use, invoking article 714-5 of the French Intellectual Property Code: “An owner who has not put his mark to genuine use in connection with the goods or services referred to in the registration during an uninterrupted period of five years, without good reason, shall be liable to revocation of his rights”.
The issue was whether the use of a trademark on the Internet constitutes a genuine use or not, in accordance with article 714-5 of the French Intellectual Property Code. In a decision dated November 20, 2015[i], the Paris Court of Appeal overturned the Court of First Instance’s decision[ii] to forfeit Le Figaro’s rights to its trademark.
According to the Court of Appeal, the reports provided by the bailiff, demonstrating that the number of single visitors (on average 1 700 per month, during off-peak periods) is not significantly lower than the number of visitors, proved the existence of the magazine’s publication on the Internet and consequently the effective and genuine use of the “Jours de France” trademark, irrespective of the trademark’s quantitative use.
Indeed, the Court of Appeal, in line with the ECJ’s decisions Ansul[iii] and La Mer Technology[iv], considered firstly, that the quantitative criterion does not constitute a defining assessment and secondly, that the online dissemination of the magazine is likely to broaden the audience reach of the product.
The Court of Appeal also specified that the publication of hard copies of the magazine, even at a low distribution rate, supported the genuine use of the trademark.
[i] Paris Court of Appeal, 5th Division, 2nd Chamber, November 20, 2015, RG No. 15/00522
[ii] Court of First Instance, 3rd Chamber, 4th Section, December 18, 2014, RG No. 14/00649
[iii] ECJ, Ansul BV v Ajax Brandbeveiliging BV, March 11, 2003, Case-40/01
[iv] ECJ, La Mer Technology Inc. v Laboratoires Goemar SA, January 27, 2004, Case-259/02
To fight against cybersquatting, the UDRP procedure was first implemented more than 10 years ago to fight against these practices. It is an effective procedure. It has enabled more than 31,000 disputes to be handled since its inception in late 1999. Subsequently, and as part of the launch of the new gTLDs, ICANN created the URS procedure to supplement the UDRP procedure. This new simplified procedure is cost effective and provides a faster alternative to trademark owners. The question is what elements differ from both procedures?
UDRP
URS
Domain names at issue
gTLD, new gTLDs and some ccTLDs (can vary in terms of authorized centers)
New gTLDs and some ccTLDs
Communication
Electronic
Electronic
Authorized centers to receive complaints
1) World Intellectual Property Organization (WIPO)
2) The National Arbitration Forum (NAF)
3) The Asian Domain Name Dispute Resolution Center (ADNDRC)
4) The Arab Center for Domain Name Dispute Resolution (ACDR)
5) The Czech Arbitral Court (CAC)
1) MFSD Center
2) The National Arbitration Forum (NAF)
3) The Asian Domain Name Dispute Resolution Center (ADNDRC).
Maximum number of words
Complaint: 5000 words maximum
Response: 5000 words maximum
Complaint: 500 words maximum
Response: 2500 words maximum
Language
Language of the registration contract (unless otherwise agreed or under specific circumstances)
Complaint: English
Response: English, unless notified otherwise
Elements of the complaint
1) Identical or similar domain name that could be confused with the trademark.
2) No rights or legitimate interest in the domain name
3) The domain name was registered and used in bad faith
1) Identical or similar domain name that could be confused with a trademark in relation to which the applicant has a valid national or regional registration which is in use; or which has been validated through court proceedings; or which has specifically been protected by statute or a treaty in force at the time when the URS complaint was initiated
2) No rights or legitimate interest in the domain name
3) The domain name was registered and used in bad faith
Time limit to respond
20 calendar days
14 calendar days
Extension of time limit to respond
At the defendant’s request or following an agreement between the parties
No express limitation period
At the defendant’s request
7 calendar days maximum
Standard of proof
Preponderance of evidence
Clear and convincing evidence
No actual question of fact must be raised
Rectification of irregularities
Control by the arbitration center within 5 days of the filing of the complaint
5 calendar days to rectify the irregularity, else dismissal of the complaint
Control by the arbitration center within 2 days of the filing of the plaint
No possibility of rectifying an irregularity due to the speediness of the procedure
Time limit for decision
Within 14 days of notification of the panel
Within 5 working days from the filing of the complaint
Sanction
Transfer or cancellation of the domain name
Suspension during the registration period of the domain name
Possibility to extend the suspension for 1 additional year
Appeal
No
Yes
Panel
1 or 3 panel members
1 panel member for assessment and 1 or 3 for appeal
While the URS procedure has the advantage of speed and simplicity, the objective of the UDRP is the complete removal of the disorder. The choice between these two procedures will then take on the establishment of a strong and effective strategy, in line with the real value of the domain name to the trademark owner and the objective to achieve.
Dreyfus proposes to assist you with any URS or UDRP and worldwide considering the best strategy for recovery and protection of your rights.
The Economic Interest Group (EIG) Prop and the company Groupe Paredes, owners of several trademarks, granted the company Raynaud, also a member of the EIG, the right to use their trademarks.
A compulsory liquidation proceeding had been opened against Raynaud. A judgment of June 28, 2013, resulted in a compulsory liquidation plan ordering the transfer of all commercial agreements and their accessories concluded between Raynaud (initial licensee) and the owners of the trademarks, to company Orapi, then substituted by company Raynaud hygiene (subsequent licensee).
Following the decision on October 24, 2013, which overturned this transfer, the EIG and Groupe Paredes sued Orapi and Raynaud hygiene for trademark infringement, invoking in particular article L713-2 of the French Intellectual Property Code: “the following shall be prohibited, unless authorized by the owner: a) the reproduction, use or affixing of a mark, even with the addition of words such as: “formula, manner, system, imitation, type, method,” or the use of a reproduced mark for goods or services that are identical to those designated in the registration; b) The suppression or modification of a duly affixed mark”.
The issue was whether the transfer of the license agreements and the use of the trademarks between June 28, 2013 and October 24, 2013 by Orapi and Raynaud hygiene, constitutes an infringement under the provisions of article L713-2 of the French Intellectual Property Code.
In a decision dated September 15, 2015, the Commercial Chamber of the Court of Cassation (the French Supreme Court) confirmed the Court of Appeal’s decision to reject the qualification of trademark infringement.
According to the Court of Cassation, the judgment approving the assignment plan should be enforceable by operation of law and should take effect from its pronouncement. The Court specifies that because Orapi and Raynaud hygiene had benefited from the transfer of all commercial agreements and their accessories, the same also benefited from EGI membership. Therefore, the actions resulting from the transfer couldn’t be qualified as counterfeit.
Thus, the law on collective procedures can limit the rights of the trademark owner to choose its licensee. Indeed, in determining the compulsory liquidation plan, the Tribunal may order the transfer of license agreements without the licensor’s consent.
However, even if in this specific case the licensor cannot choose its new licensee, the agreement’s provisions can always be invoked in order to bind the subsequent licensee. Particular attention should therefore be paid to the drafting of such provisions.
Pursuant to certain provisions of the Hamon law[i] which increases the opportunities offered to local authorities and to public institutions for intercommunal cooperation (EPCI) to protect their rights, Decree No. 2015-671 of June 15, 2015 sets the conditions for an alert request in case a trademark which contains their name is filed.
In fact, some local authorities had been subject to appropriation of their names by third parties. Yet, they could only oppose the appropriation for products and services in relation to public service tasks entrusted on the account of the administered[ii].
For example, the city of Laguiole attempted to prevent the use of its name by a third party as a trademark. This third party was trading products which were not manufactured in the city. The Paris Court of Appeal, confirming a judgment at first instance, reversed the city’s claims for nullity of the trademark and deceptive marketing practices. According to the Court, “the reputation of the term “laguiole” is attached to specific products which are knives and cheese named after the city and it has not been shown whether the client has been misled regarding the geographical origin of the range of products whose trademarks include the term “Laguiole” when reading the catalogue thinking that they all originate from a small rural city of some 1,300 residents”.[iii] The Court of Appeal therefore not only upholds that the risk of confusion between the origin of the products and the city has not been proven but also and above all that the commune was not showing an infringement of its existing rights.
To overcome those difficulties, the Hamon law introduced the possibilities for economic actors of the craft and industrial industries and for the local authorities to request the protection of their industrial and craft products under geographical indications. The complex procedure requires amongst other things sending a homologation file.
The law also introduced the possibility for local authorities to make observations or to oppose the registration of a trademark which is likely to infringe the geographical indication or name, image or the reputation of the authority or institution according to Article L711-4 h) of the French Intellectual Property Code (CPI).
Without monitoring, this opportunity could risk falling into nonexistence. This has been accomplished since Article L712-2-1 of the CPI introduced by the Hamon law provides that: “all local authorities and public institutions for cooperation between local authorities can request the national Institute of Industrial Property to be alerted whenever a request for the registration of a mark bearing its name is filed according to the terms and conditions set out in the decree”. More than one year had to pass for this decree to set its conditions.
This alert procedure makes it possible to rapidly address an infringement and to benefit from the opposition procedure before the INPI.
In fact, it is very important today that local authorities and the EPCI protect their rights against the appropriation of their name. In this way, the opposition prevents the registration of a trademark before its exploitation if this trademark infringes the name, the image, the reputation of the local authority or of the EPCI.
Nonetheless, the opportunity to oppose a trademark and the chances of success of such a procedure should be examined. It is for local authorities and the EPCI to prove, during an opposition to the registration of a trademark, the infringement of their existing rights (for example the reputation or the image of the authority) or of their geographical indications.
Dreyfus offers to assist you in any claim for the protection of industrial and craft products with respect to geographical indications, in setting an alert or opposition to registering a trademark by taking into account the best strategy for promoting and protecting your rights in relation to those possibilities.
In a dispute concerning the use of third party trademarks to advertise one’s own products, the Cour de Cassation, in a decision of 10 February 2015[1], illustrated the scope of the exception of necessary reference.
Whilst trademark holders can prevent third parties and especially competitors from using their trademarks without their consent, there exists however an exception to this monopoly for manufacturers of accessories. Article L.713-6 b) of the French Intellectual Code states that the registration of a trademark “does not preclude the use of the same symbol or that of a similar symbol as necessary reference to indicate the intended purpose of a product or a service, in particular as accessory or spare part, provided that there is no confusion as to their origin.”
In this case, a company selling degradable bindings for viticulture had used, during the demonstration at a trade exhibition, an electric linker sold under another trademark to demonstrate the compatibility of its product with this kind of device, which is widely used in that industry. The trademark owner had then acted on it and claimed infringement of their rights.
But while case law abounds on accessories as such, for which the reference to a third party trademark is required, it is less common in regards to the use of a third party product to praise the attributes of one’s own product. Actually, in the meaning of the law/strictly speaking, the said bindings are not an accessory to the electrical linker of this trademark in particular. The purpose of the company was only to demonstrate the compatibility of its products with this kind of device.
The Cour de Cassation ultimately dismissed the claim after having examined, on one hand the necessity of using a third party product in a public demonstration and on the other hand, the absence of any risk of confusion as to the origin of the products.
The judgment notes first that the sole purpose of the demonstration was to convince wine industry professionals that the bindings could be severed with an electrical linker. Since the company does not manufacture such a device, it had to use the electrical linker of a competitor. Choosing this particular competitor was not questionable since it is the world leader in its field. The court concluded that “the comprehensible and complete information regarding the compatibility between the bindings and the use of electrical linkers could not have been transmitted to the public without using the trademark of a third party”. Ultimately, what justifies this usage is the fact that the company didn’t have any other choice. It is still necessary, in accordance with the provisions set out in the Article L713-6 b), for the use of the symbol not to be such as to create a risk of confusion over the origin of the products. However, the trademark of the third party was reproduced “neither on their products, nor on their packaging, not even on their commercial documentation”, on the contrary it was the trademark of the company selling the bindings which was visible so that no risk of confusion was established.
In conclusion, according to the Court’s ruling, it is allowed to use the products of a competitor to demonstrate the attributes of one’s product, without its consent; provided that such use was necessary and that it is not likely to mislead the public as to the origin of the products.
[1]Cour de Cassation, Commercial Division, February 10, 2015, 13-28.263
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The use of a trademark within a family of trademarks cannot be invoked as a basis for justifying the use of another trademark belonging to the same family.
