Olfactory Trademarks: a Hard-to-Reach Protection, the German Case

Written by Dreyfus07/02/2024

*Image generated by DALL E 3 Microsoft Version

In the realm of intellectual property law, the protection of olfactory trademarks presents a unique challenge. Unlike traditional trademarks, which rely on visual representation, olfactory trademarks are based on scents, making them subjective and difficult to standardize. This complexity is vividly illustrated in the case of the German Patent Court’s decision in 29 W (pat) 515/21.

On September 3, 2020, a groundbreaking application was filed for a German trademark in class 28, covering “sports articles.” The application was unusual; it sought to register an “olfactory mark,” described as “the scent of honey from the nectar of common heather flowers (Calluna Vulgaris) on golf balls.” This application challenged the conventional boundaries of trademark law, venturing into the relatively uncharted territory of olfactory marks.

The German Patent and Trademark Office, however, found the application lacking. They rejected it on the grounds that the scent was not represented in a manner allowing authorities to determine its scope of protection precisely. This rejection brought to light the pivotal requirement of representability in trademark law, an aspect often taken for granted in more traditional applications.

The applicant’s appeal brought forth further insights. The German Patent Court maintained that for a mark to be registrable, it must meet stringent criteria: it should be clear, precise, complete, accessible, intelligible, durable, and objective. These criteria, known as Siekmann’s criteria, are now a cornerstone of the EU Trademark Regulation (EUTMR), specifically Article 3, paragraph 1. The applicant’s description, while creative, failed to meet these stringent standards.

Moreover, the Court pointed out that descriptors like “bitter,” “strong,” and “aromatic” are inherently subjective and do not provide the objective clarity required by law. The Court’s decision serves as a vital reference point for future applicants, illustrating the nuanced requirements of non-traditional trademark registrations.

Interestingly, the Court also discussed various unsuccessful methods of representing olfactory marks, such as chemical formulas and color codes used in the perfume industry. These methods, while innovative, fell short of the legal standards for clarity and objectivity.

This case exemplifies the gap between current legal frameworks and technological advancements. The EU’s trademark reforms theoretically allow for the protection of olfactory marks, yet the technology to represent scents precisely and objectively is still evolving. This scenario presents an intriguing paradox where the law, typically seen as reactive, is ahead of technological capabilities.

The future, however, holds promise. With digital scent technology progressing rapidly, there is hope that reliable odor reproduction could soon make olfactory trademarks a practical reality. This advancement would mark a significant leap in intellectual property law, opening new frontiers for trademark protection.

At Dreyfus Lawfirm we stay at the forefront of these developments, ensuring our clients are well-equipped to navigate the complex landscape of trademark law, whether traditional or cutting-edge. In a world where legal precedents and technological innovations constantly redefine the boundaries, our expertise becomes your asset in safeguarding your intellectual property rights.

New developments at WIPO: greater clarity for international trademark!

Written by Dreyfus02/02/2024

*Image generated by DALL E 3 Microsoft Version

In an information notice (information notice No. 26/2023), WIPO has announced a number of amendments to the Regulations under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks.

These amendments, which have been in force since 1 November 2023, provide clarity for right holders and their representatives.

Indication of the start and end date of the period for replying to a provisional refusal

Although an international trademark is registered through a one-stop shop, once the international phase has been completed, the application is forwarded to the offices of the designated countries for examination in accordance with their national legislation. It is during this examination that any objections or provisional refusals are issued.

Until recently, the deadlines for responding to provisional refusals could lead to confusion, as many national or regional offices did not indicate either the deadline for responding or the dates on which said deadline was calculated.

To overcome this issue, national or regional trademark offices will now be required, when issuing a provisional refusal, to indicate the deadline for response, as well as the start and end dates of the deadline, unless the time limit starts to run on the date on which WIPO transmits the provisional refusal to the holder. In this case, it will be up to WIPO to indicate the start and end dates of the period in its notification.

As a security measure, in the rare event that an electronic communication does not reach the intended recipient (due to a faulty e-mail address or a full inbox, for example), WIPO will also send a copy of the notification of provisional refusal by post.

Introduction of a minimum time limit for responding to provisional refusals

Until recently, WIPO did not impose any minimum time limit for examining and responding to provisional refusals. These deadlines, determined by the national/regional intellectual property offices, ranged from 15 days to 15 months.

Sometimes very brief, they were therefore a real source of difficulties for trademark right holders and their representatives.

To alleviate this problem, a minimum period of two months (or 60 consecutive or calendar days) is now allowed for filing a request for review, an appeal or a response to a provisional refusal.

In addition to this minimum two-month period, WIPO will calculate and communicate to right holders a specific date for responding to provisional refusals.

While the initial deadline for compliance with this new requirement is February 1st, 2025, Contracting Parties that require additional time, especially to adjust their legal framework, can choose to further postpone the implementation of this obligation.

Conclusion

These changes, which industrial property law practitioners have been advocating for several years, are to be greeted with applause.

A positive development, which shows that WIPO is listening to the voice of its users.

Unicorn companies use short domain names

Written by Dreyfus26/05/2023

Unicorns, those private companies characterized by innovation and whose valuation reaches or exceeds one billion dollars, prefer short domain names (1). This was considered by researchers at the Stanford University Graduate School of Business and reported by one of the professors, Ilya Strebulaev, on LinkedIn.

On average, unicorns use domain names composed of 8.4 symbols, thus domain names with less than 7 characters have a 36% chance of belonging to unicorn companies. One reason for this result is that short domain names are more likely to attract consumers. Being more attractive, these names are also more expensive to resell. Therefore, once a company enters the unicorn category, it can afford to change its domain name to a shorter one.

Therefore, when creating a company, the search for priorities on the envisaged name is essential both on a legal and marketing level. The search for the domain names makes it possible to identify the names that are relevant to the foreseen activity. Occasionally, they will not be a problem from a legal perspective because they are not used or are used for very different activities. On the other hand, if the .COM or .FR corresponding to the sign is available, it allows the avoidance of a repurchase attempt which can be refused or sometimes accepted for an amount in 6 or 7 figures.

References

(1) https://domainnamewire.com/2022/11/10/stanford-researchers-unicorns-use-shorter-domain-names/ and https://www.linkedin.com/posts/ilyavcandpe_stanford-stanfordgsb-venturecapital-activity-6996498149833891841-30Jq/?utm_source=share&utm_medium=member_desktop

Are Perfumes and Clothing Similar Products Under Trademark Law ?

Written by Dreyfus17/02/2023

Paris Judicial Court, 3rd section, April 5, 2022, 20/12763

Sun Consulting SARL and M. Y W vs H&M Hennes & Mauritz LP et H&M Hennes & Mauritz SARL

In a judgment dated April 5, 2022, the Third Chamber of the Paris Court of Justice ruled on an infringement action between the European Union trademark “CREMIEUX” covering clothing, footwear and apparel products and the trademark “RUE CREMIEUX” under which perfumes are marketed.

In this case, despite the plaintiffs’ argument that stated that clothing and perfumes were similar goods regarding their complementarity and the close connection of their aesthetic function, the Court rejected the infringement action for lack of similarity between these products.

The owner of a trademark may prohibit the use, without their consent of a sign identical or similar to their trademark by a third party. This is to be noted in such circumstances, for example

• when such use occurs in the course of a trade,
• when relating to identical or similar goods and services to those for which the trademark has been registered and
• when there is the possibility for a likelihood of confusion, ie. undermining or initiating liability that could undermine the guarantee of the identity of origin, which is an essential function of the trademark.

Although French and European courts regularly encounter the issue of similarity between perfumes and clothing, uncertainties persist concerning the assessment of this similarity.

Which factors should be used to assess the degree of similarity between goods?

On several occasions, the Court of Justice of the European Union has stated different relevant factors to be used in assessing the degree of similarity between goods or services. The nature, purpose, use, distribution channels, or the competitive or complementary nature of the goods or services concerned, are taken into account.

Nevertheless, if such criteria is lacking, the European Court of Justice admits that a degree of similarity can remain if the goods present a certain aesthetic complementarity.

This complementarity will be retained when three cumulative conditions are fulfilled.

i) One product must be indispensable or important over the use of another.
ii) Consumers must consider the use of the goods together as usual and normal.
iii) Consumers must consider it common place for these goods to be marked under the same trademark.

The Court of Cassation (Supreme Court) adopts a different approach in comparison to that of the Court of Justice, whereby they look at whether the consumer is able to attribute to a common origin the goods and/or services at issue. However, if this interpretation is applied too widely, it could lead to qualifying goods as similar, thereby confirming that a risk of confusion is not altogether impossible or out of the question.

Even though the condition of trademark infringement must be interpreted in light of the risk of confusion, Article 9 of Regulation 2017/1001 states that the concept of similarity is both a necessary condition and an interdependent criteria of the risk of confusion. Therefore, the similarity of goods or services cannot depend on the possibility of a likelihood of confusion as it is the latter that depends in part on the similarity.

Can perfumes and clothing be considered similar goods under these factors?

In the present case, the Third Chamber of the Court of First Instance, considers that clothes and perfumes do not share the same nature or purpose and are not usually sold in the same stores.

Although they may have a similar function of enhancing the wearers appearance, this function is secondary and not convincing.
The primary function of clothing obeys and follows the rules of a purely functional purpose while perfume has for finality, the diffusion or intermingling of a pleasant smell. Therefore, the common use of both clothes and perfume during daily outdoor activities is not sufficient enough to characterize a relevant factor of similarity.

But what about aesthetic complementarity?

The Court found that perfumes were not important or even indispensable for the use of clothing, and that clothing was not important for the use of perfumes either.

This judgment may seem surprising regarding the jurisprudence issued by the Court of Appeal on the similarity between perfumes and clothing.

Indeed, in a decision dated September 23, 2021, the Court of Appeal of Aix-en-Provence had recognized as justified, the opposition to the registration of a trademark filed with the INPI for clothing. This was purely on the basis of an earlier trademark registered for perfumes and cosmetics.

The decision by the Court of Appeal was mainly based on the presence of identical distribution networks.

The Court of Appeal also attributed a significant role to the aesthetic function, which, according to the Court of Justice, cannot be considered as a sufficient factor.

This trend, which aims to make the principle of speciality more flexible, is mainly reflected in the luxury sector where well-known trademarks are very present.

In consideration of this fact, many decisions recognize the similarity between goods in class 3 (perfumes and cosmetics), goods in class 25 (clothing) or even classes 14 (jewellery) and 18 (leather goods).

Indeed, houses such as Louis Vuitton or Maison Margiela offer both clothes for sale and, to conquer a wider audience, perfumes. However, this diversity of products can also be found in non-luxury brands, with different ranges, such as Zara or Lacoste.

In this judgment, the Court of Justice goes against a French jurisprudential trend which qualifies perfumes and clothing as similar. Furthermore, according to the Third Chamber of the Court, the fact that fashion companies market perfumes under their own brand name, cannot be a sufficient factor to make these products similar.

Is it impossible to file an infringement action against a trademark offering perfumes for sale on the basis of an earlier trademark registered for clothing? And is this also the case vice versa?

In retrospect, it must be noted that even though it may not be necessarily so, the decision shows that the chances of success could very well be limited.

Nevertheless, French courts do not yet give a unified and homogeneous answer on this subject and decisions remain casuistic and sophistically cautious.

For example, the Paris Court of Appeal recently ruled in a decision dated September 14, 2022 that there was a risk of confusion between an earlier trademark filed for perfumery and cosmetics and a trademark intended to designate clothing. To determine this similarity, the Court based its decision on the fact that these products belong to the field of fashion, have the same aesthetic function, are targeted at the same clientele and can be marketed under the same trademarks by the same companies and distributed through the same distribution network.

Therefore, we will surely have to wait for the Court of Cassation‘s decision on this matter to obtain a standard and clearer answer in determining and ensuring a more specific and higher level of legal security and protection for trademark owners.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.

How does the Chinese Hangzhou Internet Tribunal decision set the pace for copyright protection on NFTs platforms?

Written by Dreyfus08/11/2022

NFTs, or non-fungible token is one the biggest digital revolutions of our century. An NFT is a digital token operating on a blockchain.

Because it is non-fungible, an NFT guarantees someone’s property over a digital artwork. When it is combined with an artwork, an NFT can be considered as a certificate of authenticity.

Although an NFT is a revolution within the digital world, some issues may be raised. In fact, what about artists’ copyrights in this digital environment? How can artists’ copyrights be protected within NFT platforms? Can an NFT platform be held liable for copyright infringement? There are many proposals for reasonable responses called forth by intellectual property attorneys.

Copyright law is meant to protect artists’ rights over their artistic or literary artworks. Particularly, copyright law protects books, musical artworks, paintings but also database.

Everybody can sell or buy digital artworks on a blockchain. Therefore, what about platforms’ liability? If every one of us can sell or buy artworks, there is absolutely no guarantee that the artworks has been put on the platform by its author. As such, it is fairly common that an artwork put on a blockchain infringes the author’s copyrights. In such case, it is crucial that the author defends for their rights in collaboration with the intellectual property attorneys.

The answer to know whether an NFT platform can be held liable for copyright infringement has been raised in the case Shenzhen Qice Diechu Culture Creation Co. Ltd v. Hangzhou Yuanyuzhou Technology Co., Ltd a.k.a “Chubby tiger having its shot”.

In this case, Ma Qianli, the author of the cartoon at stake gave to Shenzhen Qice Diechu Culture Creation an exclusive license to use his copyright over the “Chubby tiger having its shot” artwork. Defendant, Hangzhou, owns an NFT platform. This latter authorized a third party to sell NFT derivative products of the “Chubby tiger having its shot” artwork. Shenzhen then brought a lawsuit for copyright infringement against the NFT platform.

This decision is important for two reasons. Firstly, it is the first decision where copyright infringement is involved on an NFT platform in China. Secondly, the action is brought against an NFT platform.

The first question raised by this case deals with NFT platforms liability. By definition, a blockchain is decentralized. That means that nobody nor any entity checks the identity of a person.

Therefore, NFT platforms do not check the paternity of an artwork linked to an NFT. A person can sell or buy NFT-artworks and it is not even the author nor a licensee. Hence, counterfeit artworks can freely circulate on NFT platforms, infringing artists/creators’ copyrights.

Because it is difficult to sanction platforms when a content is illicit or infringe someone’s copyright, it is rare for authors to assert their rights on the Web 3.0.

In this case, defendant raises some arguments to avoid liability. First of all, defendant mentions that his platform is a third-party platform. Artworks are downloaded by the platform’s users. This latter cannot be held liable for its users’ activities. Thus, the platform put the concerned NFT on its address form. Therefore, it fulfilled its notification/deletion obligation. At last, a platform cannot divulgate which blockchain has been used nor where the NFT is.

The Internet Tribunal refuses the arguments raised by defendant. In fact, it considers that the platform at stake is a professional platform. Consequently, the Tribunal highlighted a major distinction between NFT platforms. Here, the platform is considered as being a professional NFT platform. The underlying idea is that as soon as a platform is qualified as professional, its liability can be engaged for copyright infringement.

Even though the Tribunal does not when an NFT platform is a professional, it can still be deduced. In fact, the platform at sake is qualified as professional because it proposed transactional services. Consequently, it is a professional NFT platform when it invoices certain percentages fees for each transaction.

Because a transaction has been made and because the platform obtained a financial gain, the platform must fulfil higher obligations when it comes to copyright protection. For example, a professional platform must proceed with preliminary examination regarding the digital artworks’ property that are sold or bought on their platforms. This activity may be efficiently conducted in collaboration an intellectual property attorney.

The Tribunal here considers that the platform failed its duty of care. In this regard, when an NFT platform is professional, it must put in place reasonable measures to check the artworks’ property once they are put on a blockchain by asking to the seller/artist to prove the artworks’ copyright.

The first Chinese NFT copyright infringement was made against a platform since the appellant could not obtain the name of the seller. Claimant, during the proceeding, asked for the seller’s identity in order to sue him for copyright infringement. Consequently, this case is not over yet.

Nevertheless, this case set the pace as for NFT platforms. This decision can be seen as a warning for every NFT platforms which will have to be careful regarding each NFT digital artworks sold or bought on their platforms.

SEE ALSO…

What are the legal issues behind the registration of Off-Chain NFTs?

The new convention between the French State and AFNIC comes into force on 1st July 2022

Written by Dreyfus01/09/2022

This agreement will set out AFNIC‘s work priorities for the years to come. One of the main aims is the development of the <.fr>.

The growth of the <.fr> will be achieved through concrete actions such as helping companies in their digital transition. In fact, AFNIC has implemented a support system to enable SMEs and VSEs to develop their presence online.

In this Convention, AFNIC has committed to investing 2% of its turnover in order to apply tariff cuts as well as to simplify registration interfaces and to organise a faster and more efficient data management system.

AFNIC has also committed to investing 10% of its turnover in innovation to consolidate its social and environmental responsibility and is committed to achieve carbon neutrality for the <.fr>.

AFNIC and the French State wish to continue the work that has already been started with the aim of developing and strengthening the <.fr>.

Why does good trademark protection in the Middle East require registration in Israel as well as in Palestine?

Written by Dreyfus22/08/2022

The Palestinian territory is the subject of much controversy, however, trademark rights are not as insignificant as they might seem.

There are several reasons why the Palestinian market should be considered in a Middle East brand protection strategy. In fact, despite the separation of the Israeli and Palestinian legal systems, it is almost impossible to separate the two markets into two jurisdictions.

How to protect your trademark rights in Palestine?

There are a number of elements that illustrate the obvious geographical and commercial links that confirm that, in order to ensure full protection of trademark rights in the Middle East, it is essential to register trademarks not only in Israel, but also in Palestine. For Palestine, it is necessary to register trademarks in both the West Bank and Gaza, which have separate trademark jurisdictions. Naturally, Israeli and Palestinian jurisdictions require separate registration in each territory in order to fully protect and enforce trademark rights. However, obtaining protection in Israel is far from providing full protection if the mark has not been registered in Palestine. The opposite is also true.

So, what are the reasons for registering trademarks in both Israel and Palestine?

This is due to the geographical situation between Israel and Palestine. The economic reality is clear: 80% of Palestine’s foreign trade is with Israel.

This necessarily has an impact on the circulation of goods and services in the region. It is therefore advisable to register trademarks in both Israel and Palestine if you want to protect your trademark in the Middl East.

Thus, given the obvious geographical and commercial links between the two states, it seems crucial to have valid registrations in three different jurisdictions, namely Israel, the West Bank and the Gaza Strip, in order to obtain trademark rights in the region and ensure full protection.

What are the suggested modifications to the UDRP?

Written by Dreyfus06/07/2021

Following the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.

ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.

It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.

Sources:

Overview: The Rights Protection Mechanisms (RPM) Review https://newgtlds.icann.org/en/reviews/cct/rpm

Phase: 1 Initial Report of the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process :

https://www.icann.org/public-comments/rpm-initial-report-2020-03-18-en

Domain name right : bona fide offer of goods or services

Written by Dreyfus18/06/2021

Rayonnage de vêtements de mode. A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?

Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.

Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.

While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.

In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.

Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.

Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.

Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.

Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.

Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.

In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.

Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.

The complaint is, therefore, dismissed.

Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant

Why is the well-knownness of an earlier trademark not enough to qualify bad faith?

Written by Dreyfus09/06/2021

La notoriété d’une marque ne suffit pas à garantir le transfert d’un nom de domaine similaire

Rémy Martin & C fait partie du groupe Rémy Cointreau, une grande entreprise de cognac. Fondée en 1724, cette maison est l’un des principaux acteurs de la production et de la fabrication du cognac en France.

Le groupe détient un large portefeuille de la notoriété d’une marque comprenant les éléments verbaux « louis » et « louis xiii » en lien avec son cognac Louis XIII le plus célèbre et le plus cher.

Suite à la détection du nom de domaine < louisthirteen.com >, E. Remy Martin & C a déposé une plainte auprès du Centre d’Arbitrage et de Médiation de l’OMPI, afin d’obtenir le transfert de ce nom de domaine.

Le nom de domaine est composé de « louis » qui est identique à la première partie de la marque et est suivi de « treize ». Un nom de domaine qui consiste en une traduction d’une marque est généralement considéré comme identique ou similaire à cette marque . « Treize » est la traduction littérale en anglais du chiffre romain « xiii », comme l’a reconnu l’expert.

Or, en examinant les différentes pages du site Internet de l’intimé, le panéliste constate que le nom est utilisé pour une véritable offre de produits en marque blanche, notamment des masques de protection contre les bactéries et les virus dans le cadre de la lutte contre le Covid-19. Bien que le Défendeur n’ait pas répondu à la plainte, des mentions légales sont présentes sur le site et une recherche rapide sur Internet des sociétés britanniques montre un enregistrement de la société Louis Thirteen Group Limited en juin 2019, soit 18 mois avant le dépôt de la plainte.

Même si la marque antérieure bénéficie d’une large protection, l’expert précise qu’il n’est pas évident que le Plaignant puisse s’opposer à l’utilisation d’un nom commercial « louis thirtheen » pour des activités aussi différentes des siennes.

La lourde charge de la preuve incombant au Plaignant pour s’opposer à l’usage de la notoriété d’une marque.

Dans l’Union européenne et au Royaume-Uni, le titulaire d’une marque notoirement connue ne peut s’opposer à l’utilisation d’une marque similaire/identique que si l’utilisation par le tiers tire indûment profit de ladite marque ou porte atteinte au caractère distinctif ou à la renommée. de cette marque.

L’expert constate que le Plaignant a manqué à sa charge de la preuve dans la mesure où il existe une possibilité réelle que le nom correspondant au nom de domaine ait été utilisé dans le cadre d’une offre de bonne foi de biens et de services antérieure à la notification du litige.

Dès lors, l’expert considère qu’il n’est pas prouvé que l’intimé n’ait aucun droit ou intérêt légitime sur le nom de domaine. Ainsi, il n’a pas à établir que le nom de domaine a été enregistré et utilisé de mauvaise foi.

La possibilité de saisir la justice reste ouverte

Pour les motifs qui précèdent, la plainte est rejetée. Cependant, l’expert déclare que cette décision n’affecte pas le droit du Plaignant d’intenter une action en contrefaçon de marque contre le Défendeur devant les tribunaux.

Une recherche rapide sur Internet aurait dû permettre au Plaignant d’identifier l’existence de Louis Thirteen Group Limited et de conclure que l’UDRP n’était pas un for approprié pour ce litige, qui devait être abordé de manière globale et non limité au seul nom de domaine. .

Par ailleurs, Louis XIII est le nom d’un roi de France et la marque antérieure n’est donc pas fantaisiste , élément que le panéliste a pu prendre en compte dans son analyse, même s’il ne l’a pas mentionné explicitement.

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