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.

Legal Watch : A public figure’s name constitutes a right that can be the basis for UDRP proceedings

Written by Dreyfus23/12/2022

Less than a month after the 2022 presidential elections, a WIPO Arbitration and Mediation Center’s Expert rendered a decision regarding a domain name reproducing the name of the re-elected candidate Emmanuel Macron.

The domain name in dispute, <emmanuel-macron.com>, had been registered on the 3^rd October 2015, during the time when Emmanuel Macron was still the Minister of Economy, Industry, and Digital Technology. Far from merely imitating the future president’s name, this litigious domain name would redirect to this website, which in fact, was the official website of the adverse polemist candidate during the 2022 presidential election. In this respect, we note that the domain name did not redirect to content related to Mr. Eric Zemmour before 2022 (according to an Archive.org search).

The complainant logically argues in their complaint that they must fulfill the requirements of paragraph 4(a) of the Policy, where it is specified that there are three cumulative elements necessary to claim the transfer of the disputed domain name. These are :

♦ The similarity of the domain with a right of the complainant.

♦ The lack of right or legitimate interest in the domain name on the respondent’s part.
♦ The proof of bad faith registration and use by the registrant.

The interest of this case stands within two main points : the assessment of the similarity between the disputed domain name and the complainant’s prior rights, and the characterization of the registrant’s legitimate interest.

The complainant presents his arguments based on the existence of non-registered rights to the trademark “EMMANUEL MACRON”, a concept no longer existing under French law (except for well-known trademarks). If, by the simple fact that a domain name contains a family name that is not sufficient enough to justify an interest in bringing an action, it is important to note that under the Policy, the Experts’ assessment varies depending on the use of the family name made by the complainant. Here, the domain name was reproducing both the first name and the family name of Mr. Macron.

The Expert considers that when a person’s name is used as a trademark-like identifier in commerce, a complainant may be able to establish unregistered rights from that name to succeed in the UDRP proceedings. In this case, the Expert explains and outlines that the complainant’s use of the name “Emmanuel Macron” is not limited to his political activities but also extends to a commercial use being in this case, the publication and sale of books. Therefore, from the commercial use of his name, the complainant satisfies the requirements of the Expert. The Expert in retrospect acknowledges him as holding a non-registered trademark right. Therefore, the identity of the signs in comparison is established.

As trademark specialists, we would have appreciated a more puristic demonstration. In France, trademark rights cannot be acquired through simple use without registration (except for well known trademarks). In this case, it was up to the complainant to demonstrate that he had acquired trademark rights under Common Law or that the name “EMMANUEL MACRON” was a well-known trademark for certain goods and/or services.

We assume that the case was urgent and that the Expert wanted to do the right thing in this unacceptable situation. The complainant was fortunate that the case was assigned to an Expert who wanted to achieve a fair decision at the expense of trademark laws.

The Expert then raises the question of legitimate non-commercial or fair use of the domain name, according to paragraph 4(c)(iii) of the Policy.

In this case, the disputed domain name, redirects to the website of another opposing political figure. Therefore, the use of this domain name does not seem commercial and therefore, could more likely fall into the scope being freedom of speech.

However, previous experts have ruled that the right to legitimate criticism does not necessarily extend to the registration or use of a domain name which is identical to a trademark or a right, when it could create a risk of confusion through impersonation. Therefore, the use of the name EMMANUEL MACRON to redirect to his opponent’s website, Eric Zemmour, would incur a risk of implicit affiliation with the complainant. This would also constitute, on the part of the respondent, an attempt to misleadingly divert Internet users, especially since the respondent cannot claim to be known or be recognized under the name “EMMANUEL MACRON”.

As a result, and according to paragraph 4 (c) (iii) of the Policy, the Expert has determined and decided that it cannot therefore, be considered as a legitimate non-commercial or fair use status. In conclusion, the registration and use in bad faith were also acknowledged for the same reasons. As the domain name was registered at the end of 2015, the panel observed that the complainant had already acquired significant notoriety as a public figure in France. Moreover, the redirection to the website of a political opponent was likely to mislead Internet users and disrupt the complainant’s activities.

In retrospect, this case could have been subject to much harsher and serious consequences, as the intent seemed to take the form of manipulating an electorate in the run up to the presidential election, rather than taking advantage for commercial purposes.

Personal data, intellectual property and consumer law: their challenges in the metaverse

Written by Dreyfus22/11/2022

The concept of Metaverse is nothing new. This term was first introduced by Neal Stephenson, in his science-fiction novel “Snow Crash” as a “form of human life and communication in a virtual three-dimensional space through a digital avatar”. As of today, this new world is no more science-fiction but part of our world.

Thus, this new virtual world raises some legal issues as to its use, especially when it comes to personal data, intellectual property and consumer law.

The metaverse is a 3D virtual world. Within this universe, users can live a complete immersive experience since they all can interact, buy, sell products, sell lands, etc.

The metaverse is a world full of opportunities as well as a world still in development. As a matter of facts, more and more individuals and companies have jumped into this new world where they both experience a unique experience. Because this is a virtual world, it is of legal interest and certain questions need to be raised.

What will be the applicable privacy laws in the metaverse?

When Facebook changed its name to Meta and introduced their vision of Metaverse, the trust people could have had toward the metaverse shifted. Thus, just as in the real world, the issue of personal data has an important place in the metaverse.

In a more general way, the virtual world is only a reflection of the real world. At the very least, it can be an improved version of reality. As this world is virtual , the use of data becomes a major issue. As the data collected is different than in real world that involves numerous amount of information concerning the user, especially through their avatars as users are accurately represent by their avatars. Through their avatars, facial expressions, gestures or types of reactions that a person might have during their interactions in the metaverse can be collected.

Because facial expressions, gestures, or interactions can be collected, the traceability of users will be even more advanced than in the real world.

The European Union has the user’s data protected from being collected without their consent with the applicability of the General Data Protection Regulation (GDPR). Now the question is does the GDPR apply in the metaverse? Can the GDPR protect European nationals?

As per the Article 4 (1) of GDPR gives a broad definition of “personal data”. According to article 4(1), personal data is any information which are related to an identified or identifiable natural person.

From this definition, the GDPR can indeed be applied in the metaverse. As the personal data is defined in a broad way, even indirect data can be considered as personal data. Therefore, as soon as a gesture or facial expression can be traced back to a person, it will be considered as personal data.

However, what about the territorial application of the GDPR? In fact, this Regulation only protects users when they are within the European Union. Yet, the metaverse, by definition, is a world without any borders.

Is Metaverse, facilitating counterfeiting?

The second issue raised by the metaverse is dealing with intellectual property law, and more specifically, about counterfeiting. There have been recent cases of counterfeiting in the metaverse, the most famous one being the MetaBirkin case.

On January 14, 2022, Hermès sued the artist Mason Rothschild for counterfeiting its Birkin bag. In fact, the latter had created a hundred or so NFTs in the shape of the Birkin bag, which he sold in the metaverse for cryptocurrency.

The French Intellectual Property Code defines counterfeiting as any violation of an intellectual property right, such as the reproduction, imitation, or total or partial use of a trademark, patent, model, copyright or software without the authorization of its owner (article L.335-2 French Intellectual Property Code). If a work or object belonging to a brand or artist is copied into the metaverse, there is a risk of infringement.

However, the question arises as to whether the products of small companies or the works of lesser known artists are counterfeit. While well-known brands or artists can effectively defend themselves against misuse of their brand or work in the metaverse, it is much more complicated for companies or artists who are unknown to the general public. Thus, there could be a disparity between the well-known people/companies and the “others”.

Hence, the best way to avoid such disparity but also to avoid any infringement, would be for companies or artists, whether they are known or not, to register trademarks covering virtual products or services. Similarly, one solution to avoid infringement of artists’ copyrights would be to use the blockchain. In fact, blockchain grants certificates ensuring a follow-up of the transactions and the originality of each world sold. As a result, a traceability of the work is in place, making it possible to avoid future counterfeiting.

Will consumer law apply to Metaverse?

As a mirror of the real world, users can buy and sell products. Because consumers find themselves buying products in this world, consumer law cannot be overlooked.

Generally speaking, consumer law can be defined as all the legal and regulatory provisions designed to protect the consumer. Thus, as in the real world, the virtual world must be regulated and governed by consumer law. The terms applicable in the real world will be applied in the virtual world and sanctioned in the same way.

The Commission National for Information Technology and Civil Liberties (CNIL) has looked into the issue of consumer law in the metaverse and has considered that consumers must receive enhanced information and be able to refuse without suffering the consequences. However, this seems complicated in the metaverse.

The metaverse offers infinite possibilities to its users, and to our society in general. However, the metaverse raises questions, particularly in terms of personal data protection and trademark law. Moreover, the metaverse, like the real world, offers its users the possibility of selling products. Consequently, consumer law must be applied there. In other words, the legal rules applicable in the real world must be respected in the virtual world, and some of them must be adapted to ensure the best protection of goods and users. As this technology is booming, it will be important to see how legislations adapt to this new world.

SEE ALSO…

♦ https://www.dreyfus.fr/en/2022/08/12/what-are-the-legal-issues-behind-the-registration-of-off-chain-nfts/

♦ https://www.dreyfus.fr/en/2022/03/11/metaverse-is-it-necessary-to-register-specific-trademarks-for-protection/

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.

Validity of three-dimensional trademarks: Tic-Tac does not crack.

Written by Dreyfus11/07/2022

A three-dimensional trademark, featuring the shape or packaging of a product is valid, provided that this shape is not exclusively technical or practical in nature. Otherwise the shape would be necessary and therefore not protectable. This principle stands out in a decision of the Court of Appeal of Paris dated 15 February 2022.

FERRERO, which has been manufacturing and distributing TIC-TAC candies since 1971, is the owner of an international three-dimensional trademark designating France and two French three-dimensional trademarks. The company contested the participation of the Polish company BMB at the international food trade fair in Paris, and had a seizure carried out on a candy box similar to the famous TIC-TAC box. By deed dated 16 November 2016, FERRERO summoned BMB before the Paris TGI (High Court of First Instance) for trademark infringement and unfair and parasitic competition.

The court upheld these claims in a judgment dated 7 June 2019, and BMB appealed the decision. The Court of Appeal reaffirmed the validity of the three-dimensional mark, and concluded that the appellant’s goods constituted acts of infringement and unfair competition.

1. The affirmation of the validity of the three-dimensional trademark as a purely aesthetic object

The court referred to the previous 1964 French law on trademarks and to Article L.711-2 of the French Intellectual Property Code, according to which the distinctive shape of the product or its packaging is considered a trademark, provided that this sign does not consist exclusively of the necessary or generic designation of the product or service.

To recall, the appellant used the presence of a lid to demonstrate that this mark consisted exclusively of the necessary designation of the product. It claimed that the opening and closing system was evident in the trade mark application and that the FERRERO companies had always presented the sign as having a flap lid and highlighted the existence of this element in their advertisements. In support of its claim, it added that the trade mark merely incorporated the patented solution, and that the three FERRERO patents demonstrated the technical and functional nature of each of the elements of the registered sign. The defendant retorted that the trade mark was a purely aesthetic object and form, and did not in itself show any technical result or form necessarily imposed by the function or nature of the goods designated.

The Court ruled in favour of the defendant, stating that, although the box as filed showed a recessed part in its upper part, the system for opening or closing the box was not apparent and this recessed part did not show any technical or functional result, regardless of the fact that the FERRERO companies had communicated the opening of a box of candies in their advertising, the validity of the trademark having to be assessed solely on the basis of the representation filed. As for the French trademarks whose shape associates the above-mentioned box with the small coloured oval sweets it contains, these are distinctive, thanks to a study revealing that a picture showing these small sweets was spontaneously attributed to the TIC TAC trademark by 70% of the 1073 people questioned.

2. A reminder on the assessment of the risk of confusion

The Court invoked Article L.713-3 b) of the French Intellectual Property Code in its old version. It recalled that the likelihood of confusion must be assessed by reference to the trademark registration, and that only the conditions of use of the contested sign and the marketing of the allegedly infringing goods must be taken into account, in respect of which the perception of the relevant public will be examined by reference to the sign and the goods and services referred to in the application.

This risk must also be analysed globally with regard to all relevant factors, and in particular the reputation of the mark. The overall assessment of the similarity of the trademark and the sign at stake must also be based on the overall impression they produce with regard to their distinctive and dominant elements.

The Court found that the comparison between the three-dimensional marks of FERRERO and the boxes presented by BMB shows significant similarities and that the visual differences do not alter the visual impression given by the signs in conflict and are not immediately apparent to the consumer concerned. Thus, the contested products appear to be imitations of the FERRERO marks, which generate a risk of confusion in the mind of the consumer who may confuse or associate the signs and consider that BMB’s products are a variation of the candy boxes covered by the FERRERO trademarks.

3. Clarification of the differences in the assessment of unfair competition and free riding

The court recalls that unfair competition and free-riding based on Article 1240 of the French Civil Code are identified by applying two distinct criteria. Indeed, unfair competition is based on the risk of confusion, a consideration that is foreign to free riding, which requires the circumstance that, for profit and in an unjustified manner, a person copies another person’s economic value which is the result of intellectual work and investment.

From these statements, it asserts that Ferrero, the French distributor of TIC TAC products, is entitled to argue that the acts of infringement committed to the detriment of the Italian company Ferrero, the owner of the counterfeit three-dimensional trademarks, constitute separate acts of unfair competition against it. They have in fact led to a risk of confusion between the products presented by the company and the TIC TAC products. Separate acts of parasitism also result from the fact that BMB unduly sought to take advantage of the strong recognition of the TIC TAC products by the French public

This review of the strict conditions for establishing the validity of a three-dimensional trademark based on its characteristics at the date of filing, as well as the practical consequences that a trademark can draw from them, is welcome news for companies wishing to benefit from the strategic perspectives offered by the filing of such a trademark.

Family of trademarks and summary proceedings: from opportunism to trap?

Written by Dreyfus08/06/2022

Don’t be fooled, although the argument of the family of trademarks can certainly be used to avoid the cancellation of a trademark for non-use, it can also work against you. This is partly the lesson taught by a decision rendered on December 17, 2021 by the Paris Court of Appeal (Paris Court of Appeal, Pôle 5, ch. 2, n° RG 20/17286), judging a summary judgment on appeal.

This decision also provided an opportunity to clarify a crucial and not uncommon point of law: the licensee’s standing to sue for infringement in the event of a referral to the interim relief judge.

Facts and procedure. – The first applicant, a natural person named Soraya, is the owner of the European Union word trademark SORAYA covering a swimwear and beachwear creation and distribution activity. She is also the owner of French and European Union semi-figurative trademarks composed of the name SORAYA.

These trademarks are exploited through a company, the second applicant, of which the owner of the trademarks is herself the manager and sole partner. The summary proceedings were brought on behalf of both the operating company and the trademark owner. A contract conferring an exclusive concession was previously concluded between the trademark owner and the company.

After becoming aware of the existence of a company called Soraya Beachwear Ltd. located in Switzerland, the licensee applied to the interim relief judge to obtain a temporary restraining order against it. The latter company operates a website selling swimwear and beachwear on line <sorayabeachwear.com>, as well as an Instagram account related to this site. Also named Soraya, the founder of the challenged company chose to use her first name to designate her collections.

Following the dismissal of their claims, the applicants appealed the summary judgment order.

Admissibility of the licensee to act in summary proceedings alongside the owner. – One of the contributions of this judgment is the interpretation made by the Paris Court of Appeal of Articles L. 716-4-2 of the Intellectual Property Code and 25 4° of the EU Regulation 2017/1001, relating to the standing of a licensee.

Under French law, there are cases in which a licensee may bring a “civil action for infringement”, notably with the consent of the owner or as a beneficiary of an exclusive right of use, provided the owner has not taken the initiative to act within a reasonable period of time after formal notice.

In any event, the Intellectual Property Code and the above-mentioned European regulation both provide that a licensee is entitled to intervene in the infringement proceedings brought by the holder of the IP rights.

There is no doubt in this case that the operating company must be considered as the beneficiary of an exclusive right of use on the invoked European Union word trademark since the exclusive trademark license, submitted to the debate, bestows on the company the status of licensee.

However, it was not a question relating to the intervention the company in the proceedings, but rather of an action being brought jointly by the company and the trademark owner. There seemed to be a confusion between the filing of a joint action, which requires the consent of the owner when the licensee initiates the action, on the one hand, and the intervention of a third party in proceedings initiated by another party, on the other hand. Indeed, it is expressly mentioned that the company “acted in summary proceedings jointly” with the trademark owner before the President of the judicial court. In bringing this action, the licensee seeks to obtain “compensation for the damage that it has suffered”, as provided for in the law rules relating to the intervention of the licensee.

One of the decision’s highlights is the fact that the license agreement was not registered, which is a condition for its enforceability against third parties. It was however ruled that the lack of publicity of the agreement did not hinder the licensee status acquired by virtue of a validly concluded agreement.

The appeal decision therefore deemed admissible the applicants’ action and reversed the interim order on this count.

It should be noted, however, that in the case of a ‘simple’ licensee (who enjoys a non-exclusive license), the solution held by judges not the same. Indeed, under the terms of a previous decision (TGI Paris, ord. ref, July 21, 2011, No. 11/55158, Sté Lyl c/ Michel Attali), the summary proceedings judge stated the inadmissibility to act of the simple licensee: “only a person with standing to bring an infringement action may refer the matter to the summary proceedings judge in accordance with the provisions of Article L. 716-6 (…), this is not the case of the non-exclusive licensee who is only admissible to intervene in an infringement proceeding initiated by another party in order to obtain compensation for the damage that is specific to him, by application of article L. 716-5 of the Intellectual Property Code”.

In addition to verifying standing, the summary judgment judge, when not confronted with a manifest nullity of the title invoked, limits itself to assessing the existence or imminence of an infringement of the petitioners’ rights.

Lack of use of the invoked trademark. – The procedure to be followed by the interim relief judge was specified in a decision of June 28, 2011 (TGI Paris, ord. ref, June 28, 2011): “The interim relief judge must therefore rule on the challenges raised before him to oppose the measures requested, and these challenges may concern the validity of the title itself ; It is then up to the judge to assess the seriousness or otherwise of the challenge and to evaluate the proportion that exists between the challenge made by the defendants and the imminent infringement alleged by the plaintiffs and to decide, in view of the risks incurred on both sides, whether or not to prohibit the marketing of the products, to order their withdrawal and to award an advance”.

In this case, the infringement of the applicants’ rights could seemingly be characterized by the use of the identical name SORAYA to cover strictly identical products and services, namely swimwear and beachwear, as well as the related commercial services.

The applicants, in order to claim infringement, relied solely on one of their trademarks: a European Union word trademark composed exclusively of the first name SORAYA. However, in order to be successful in the proceedings, the applicants had to be able to demonstrate genuine use of the trademark in question.

As a reminder, a trademark is subject to genuine use if, within a continuous period of 5 years, it is be used in accordance with its essential function, which is to guarantee the origin of the goods and services for which it is duly registered (Regulation (EU) 2017/1001 of 14-6-2017 art. 58, 1-a).

The applicants, in communicating the evidence intended to demonstrate the serious use of the trademark, seemed to rely on a certain reputation, which they did not explicitly argue. Instead, they testified to a simple “well-known use” of the trademark, induced in part by their long-standing partnership with the Miss France election. However, the argument that did not work in their favor was that “the exploitation of the derived trademarks that were the subject of subsequent registrations did not in any way diminish the use of the historical trademark SORAYA. In addition, in order to justify the serious use of the trademark, the applicants communicated documents with a certain date, but for the complex SORAYA signs and not for the SORAYA word trademark. Moreover, among the plethora of documents submitted in support of genuine use of the trademark, several of them did not have a definite date, which makes it impossible to determine whether the trademark was actually used during the five-year reference period for which genuine use must be proven. However, this period was not communicated by the opposing party’s appeal. Therefore, in this respect, the first instance court judges referred to the period specified in the last pleadings addressed to the summary proceedings judge.

With respect to the various trademarks derived from the trademark in question, which are mostly semi-figurative trademarks, the judges will consider them as a family of trademarks.

This qualification of family of trademarks must be retained, according to consistent caselaw, for trademarks commonly held by one and the same owner and including the same distinctive element. Although the contours of this concept are insufficiently understood, it should allow a trademark owner and operator to avoid the sanction of cancellation for failure to use a trademark, whether registered or not.

A recent decision rendered by the European Union Court of First Instance (EUTA) testified to the appropriateness of this concept in relation to several trademarks containing the element “Mc”/”Mac” and owned by the American company McDonald’s. In 2016, McDonald’s won the case by asserting the following 12 trademarks in the European Union: McDONALD’S, McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC, PITAMAC. The qualification of “family of trademarks” was thus retained to cancel a “MacCoffe” trademark.

Nevertheless, what is worth remembering following the SORAYA decision is that the first instance court judges will consider that the use of a family of trademarks cannot be successfully invoked “when the aim is to establish the use of a sufficient number of trademarks of the same “family””. In this sense, the use of one trademark cannot be invoked to justify the use of another trademark. In other words, the fact that the applicants used the semi-figurative trademarks independently, which are also different from the EU word trademark, does not allow them to rely on the concept of use of a family of trademarks.

Practical considerations from the decision:

– The exclusive licensee, together with the owner of the trademark, is entitled to bring an action in summary proceedings for the prosecution of alleged infringements;

– The licensee has standing to act even if the contract under which he derives his rights has not been subjected to publicity formalities;

– The assessment of the genuine use of a European Union trademark is carried out with regard to a reference period of 5 years, which is in principle specified by the party claiming the lack of such use, both in the writings addressed to the judge of the summary proceedings and to the Court of Appeal;

– The use of a substantial number of trademarks derived from the invoked trademark, and presumably constituting a series/family of trademarks, does not necessarily prove a substantial use that will defeat the legitimate use of similar trademarks.

Legal Watch: UDRP Proceedings: Legitimate Interest of the Respondent

Written by Dreyfus03/06/2022

The legitimate interest of the respondent justified by the use of his trademark in connection with the services for which it is registered.

A respondent’s legitimate interest in UDRP proceedings is likely to be acknowledged when its registered domain names reproduce its trademark and said trademark is used for the services it covers, even though the trademark was registered subsequently to the domain name registrations. It is therefore essential for the complainant to prove in great detail that the defendant has sought to infringe its IP rights.

On 27 September 2021, Easy Online Solutions filed a UDRP complaint seeking the transfer of the domain names <cloud-mojo.com>, <cloudmojo.tech>, <cloudmojotech.com> and <cloudmojotech.website>, which were registered on varying dates between 8 May 2020 and 12 February 2021 by Cloudmojo Tech LLP.

The applicant is a US-based company specializing in the provision of web hosting, content distribution and other “software as a service (SaaS)” services. It owns four word trademarks registered in the United States between the years of 2012 and 2019 for services in class 42 relating to the signs ‘MOJOHOST’, ‘THAT’S GOOD MOJO’, ‘MOJOCDN’ and ‘MOJOCLOUD’. In addition, it has been using the domain name <mojohost.com> since 2002, and has also reserved the domain name <mojocloud.com> which redirects to the website www.mojohost.com.

Cloudmojo Tech LLP, established in June 2020 in Mumbai, India, specializes in the resale and distribution of Microsoft products and has reserved the disputed domain names in the course of its business. Furthermore, prior to the start of the proceedings in June 2022, the defendant filed the word trademark “CLOUDMOJO TECH” in India for services in Class 42, and notably for “computer programming”, “technology consulting” and “SaaS services”. Said trademark was registered on 9 December 2021.

The Panel acknowledges that there is a likelihood of confusion between the disputed domain names and the trademark “MOJOCLOUD” insofar as they consist of the same verbal elements, “MOJO” and “CLOUD”, although the terms are reversed.

In terms of the respondent’s rights or his legitimate interest, the Panel raised several points.

Firstly, the respondent is active in the IT industry, although on a relatively average scale.

Secondly, the domain names are very similar to the respondent’s corporate name. However, the respondent assumed the name only after the first three domain name registrations, i.e. a few weeks later.

The respondent argues that he was not aware of the complainant’s company, nor of its trademarks, at the time of the reservation of the disputed domain names (or at least of the first three domain names).

In fact, it must be noted that the term “cloud” is rather descriptive of the services concerned. In addition, although the term “mojo” is not descriptive of the services concerned, it is still a generic term. Thus, it is plausible that the respondent chose the term “mojo” without having been aware of the complainant’s trademarks.

This hypothesis is supported by the fact that the applicant’s marks do not seem to be known throughout the world. The Panel notes that the applicant has servers in the USA and the Netherlands. He has also been using the trademark “MOJOHOST” in the United States for numerous years. “MojoCloud” is the name used for a service offered on its website www.mojohost.com. Therefore, the claim that its trademarks have a substantial international reputation is not proven. The claimant provides no evidence of sales revenue, advertising expenditure, or of the volume of traffic generated by the www.mojohost.com website and by the redirection of www.mojocloud.com to www.mojohost.com.

In addition, the respondent has registered the trademark ‘CLOUDMOJO TECH’ in India, which is used for the relevant services. The applicant was aware of this registration application . However, no action was taken to oppose it. From this inaction it can be inferred that the applicant has no business in India. The Panel notes that although the applicant’s website is accessible from India, it has not demonstrated any activity in that territory.

In view of these elements, the complaint is rejected.

The decision is not surprising in that it is customary for a company to reflect its corporate name in a domain name, especially since the use of the respondent’s trademark is correlated with the services for which it is registered.

As such, it was essential for the complainant to prove the use of its marks in India but also to provide further evidence of its alleged international reputation. In view of the defendant’s corporate name, which was only revealed after the complaint was filed, a strong India-centered case was essential to have a chance of obtaining the transfer of the names.

(WIPO, Arbitration and Mediation Center, Case No. D2021-3197, 3 January 2022, Easy Online Solutions, Ltd. d/b/a MojoHost v. Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd)

Trademark Modernization Act

Written by Dreyfus20/04/2022

Trademark Modernization Act: new fast and efficient procedures to challenge non-used U.S. registered trademarks.

The United States Trademark system is based on use. This means that U.S. trademark holders are required to use their trademarks in relation to the goods and services designated in the trademark registration.

Contrary to the EU Trademark system, this use requirement applies both before and after the registration of U.S. trademarks. The U.S. system requires trademarks to be used before their actual filing. As regards foreign trademark registrations, an intent to use the trademark in the U.S is required.

The U.S. system traditionally provides two cancellation procedures to challenge non-used trademarks: the cancellation procedure based on ‘abandonment’ and the cancellation procedure based on ‘non-use’. While the former procedure requires a lack of use and a lack of intent to re-use it, the latter requires an asserted non-use within 5 years of its registration.

These two cancellation procedures still apply today.

However, the problem is that they are relatively expensive, time-consuming and not necessarily effective. For trademark holders, it is fairly easy to win these procedures as they simply need to show their intention to start or to resume the use of their trademarks.

Nonetheless, the Trademark Modernization Act changed this system.

The Trademark Modernization Act came into effect on December 18, 2020 and has an important impact on U.S. trademark owners and future applicants. It regards both national (U.S.) trademarks and international registered trademarks designating the United States.

This act adds two new procedures regarding non-used U.S. trademarks.

Expungement petition

A first important new procedure is the so-called ex parte expungement petition.

What?

The ex parte expungement petition is a new and relatively simple procedure to cancel U.S. registered trademarks for lack of use. It regards national and international trademarks (designating the U.S.) that have never been used in the U.S. in commerce and/or in connection with the goods and/or services after their registration.

The petition can be filed by anyone – contrary to traditional cancellation proceedings – and does not require a lack of intent to resume use.

When?

Until February 27, 2023, the petition can be filed against any non-used U.S. trademark that is older than 3 years.

After this date, the expungement petition will only be opened within 3 to 10 years after the registration of the non-used trademark in question.

Consequence?

The trademark holder has three months following the action to provide proof of use. The burden of proof, which is strictly interpreted, is thus put entirely on the latter. In case of insufficient proof of use, the trademark registration will be partly/fully cancelled.

Reexamination petition

A second important new procedure is the so-called ex parte reexamination petition.

What?

This procedure makes it possible to obtain a reexamination of trademarks registered via a national or international trademark filing (designating the U.S.) that have not been used in commerce or in connection with goods and services on a certain date. This petition can also be filed by anyone.

When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.

When the underlying application was filed with an intent-to-use basis, the relevant date will be the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.

When?

The reexamination petition can only be filed within 5 years of the registration of the trademark.

Consequence?

The trademark holder will need to provide sufficient proof of use for all of the challenged goods and services. Should the trademark holder fail to do so, the trademark registration would risk cancellation.

(Dis)advantages?

Firstly, these new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently. Contrary to the traditional cancellation procedure, these new procedures do not require the element of abandonment. It only requires non-use. The fact that a trademark holder has the intent to resume use is irrelevant in this regard.

Secondly, this new procedure makes it easier to get rid of ‘dead wood’ (non-used trademarks), and consequently, to register (non-used) trademarks faster and cheaper. Before the Trademark Modernization Act, it was generally burdensome to apply for a trademark registration when an older similar/identical non-used trademark prevented the application. In this context, cancellation procedures could take several years and bring forth substantial costs.

Thanks to the new expungement and reexamination procedures, it is more flexible and less time-consuming (it doesn’t require briefs, motions, etc.) to act against non-used trademarks and to try to register a non-used trademark yourself at a later stage.

Moreover, the new procedures require U.S. trademark holders to be (more) careful. They need to really use their trademarks and they should constantly keep evidence to prove, when needed, the actual use of trademarks in the U.S., in relation to goods and services, before and after the registration. The less evidence of use, the higher the risk of losing a U.S. trademark, and the easier it becomes for competitors to register similar and even identical U.S. trademarks.

The new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently.

Therefore, we recommend you to audit your trademark rights in the United States, in order to avoid the risk of cancellation or reexamination.

As regards your trademark registrations that are currently under review, we invite you to contact us so that we can discuss and develop the best strategy to adapt your registrations to this new regulation.

We can also accompany you in the assessment of your trademarks in order to identify the products and/or services that would be likely to weaken them.

How could Louis Vuitton, a well-known brand, fail to prevent the registration of a competing trademark?

Written by Dreyfus04/04/2022

On November 2, 2020 Louis Vuitton Malletier filed an opposition against the application for registration of the figurative mark “LOVES VITTORIO” designating the same goods in classes 25 and 26, on the basis of Article 8(1)(b) of the European Union Trade Mark Regulation (EUTR). The Office rejected the opposition on the grounds that the similarity between the earlier sign and the contested sign was slight, and thus not sufficient enough to create a likelihood of confusion on the part of consumers with an average level of attention. The opponent invoked article 8, paragraph 5, of the EUTR concerning the reputation of the trademark. However, due to a lack of evidence the judges rejected the complaint without examination of its merits.

1. Assessment of the likelihood of confusion in light of the overall impression given by the signs

Since the “SABEL BV v. Puma AG” judgment handed down on November 11, 1997 by the Court of Justice of the European Communities, a new approach to the assessment of the similarity between two signs has been put forward. This approach is more global, notably by studying the three following criteria: visual aspect, aural aspect and conceptual aspect. As a result, the Office conducts a step-by-step analysis of these criteria between the earlier mark and the application for registration of the contested mark.

First of all, on the visual aspect, the Office found a very low degree of similarity insofar as the two signs “have in common only the letter L” and “partially coincide in the stylization of the two letters”. In addition, although the stylization and colours used in the two signs are the same, consumers will perceive these elements as being merely decorative. The judges especially note a difference between the two signs by the addition of the words “LOVES” and “VITTORIO” and the letter “N” in the contested sign.

Likewise, in terms of aural similarity, the judges found only a slight degree of similarity in the pronunciation of the letter “L”. Finally, the Office stated that the two signs are conceptually different.

Thus, the Office concludes that the few similarities between the two signs are not sufficient to cause a likelihood of confusion for the consumer with an average level of attention and that they will distinguish the origin and the source of each sign. Moreover, the relevant public will perceive the sign as a whole, in particular by the addition of the terms “LOVES” and “VITTORIO” as well as the letters “L” and “N”, and will not limit itself to the same stylisation.

However, it must be noted that there is a visual similarity that could lead the relevant public not to perceive the difference between the letters “LV” and “LN” in a clear and precise manner, especially since the added term is “VITTORIO”.

Moreover, in view of the identical goods covered by the two signs, it seems somewhat surprising that the judges did not take this into account, given that according to the “Canon Kabushiki Kaisha and Metro-Goldwyn-Mayer Inc.” judgment handed down on September 29, 1998 by the Court of Justice of the European Communities, a low degree of similarity between the signs can be compensated by a high degree of similarity between the designated goods or services.

2. The unfortunate exclusion of the reputation of the earlier mark

At first glance, this decision may seem surprising in the sense that the earlier mark “LV” is a mark that supposedly enjoys a strong reputation.

Indeed, this reputation could probably have led the judges to grant the opposition request to the application for the registration of the contested mark, if the latter ” unduly [took] advantage of the distinctive character”; “or the reputation of the earlier mark”; “or [was] detrimental to them”.

However, this exclusion of the reputation of the mark is fully justified insofar as the Office renders its decision by limiting itself to the evidence and arguments provided by the opponent. However, the opponent did not provide evidence of the mark’s reputation, in accordance with Article 7(2)(f) of the European Trade Mark Delegated Regulation

It is therefore essential before the filing of any opposition to analyse the similarity between the signs and the goods and services between your trademark and the disputed trademark application, and particularly to provide all relevant evidence demonstrating the intensive use of the trademark or its reputation.

This decision highlights the importance of the evidence provided during a procedure relating to the relative grounds for refusal of registration of a trademark application, evidence that could undoubtedly have allowed a different turn of events.

Legal Watch : THE UDRP PROCEDURE

Written by Dreyfus22/03/2022

The UDRP PROCEDURE is designed to deal with cases of abusive cybersquatting.

Since the implementation of the General Data Protection Regulation and, more generally, when domain names are registered anonymously, it is often difficult to identify the enemy that we intend to strike.

The issue can be solved through filing a UDRP complaint. This is what happened to the US company Capital Distribution Consulting Inc. As the owner of the semi-figurative trademark Royal dragon superior vodka 5X distilled, the company filed a complaint against the anonymously registered domain name <royaldragonvodka.com>.

Once the procedure was initiated, the identity of the registrant was revealed. The latter was a certain Mr. X, who was an officer of Horizons Group (London) in the United Kingdom and the owner of the UK trademark Royal dragon vodka.

In fact, it turned out that both parties obtained their trademarks through a transfer carried out by Dragon Spirits Limited in Hong Kong, of which Mr. Bharwani was one of the shareholders.
This information gave rise to further exchanges between the parties, each accusing the other of having obtained the trademark unlawfully. In particular, the complainant argued that the transfer to the defendant had taken place after the liquidation of the transferee.

The facts reported in this decision are particularly complex and all-encompassing, which indicates that the UDRP is not the appropriate forum for this kind of litigation.
The expert reported that the complainant filed an additional response, which is not provided for in the Regulation, after the defendant’s response and then a second response 9 days later. This response contained 15 annexes, including a sales agreement, court orders, share transfers, a declaration relating to the liquidation procedure, etc.

The expert decided not to accept this response and consequently not to consider the defendant’s request to reply in case these submissions were accepted.
The expert pointed out that this case does not concern a simple case of cybersquatting but rather a competition matter, involving trademarks being registered around the world.

He noted that trademark rectification proceedings based on competition grounds have been granted or are still pending in different jurisdictions. Therefore, the domain name in question is fully in line with this broader dispute. The expert recalled that the Guiding Principles of the UDRP are not designed to settle all kinds of disputes that would have any link with domain names. On the contrary, the Guidelines establish an inexpensive and streamlined administrative procedure being limited to ‘abusive cybersquatting’ cases.
This decision serves as a reminder that it is essential to obtain as much information as possible about the disputed domain name that forms the subject of a procedure. For relatively old names such as <royaldragonvodka.com> being registered in 2011, valuable information can be found through consulting the Whois history of the domain name.

WIPO, Arbitration and Mediation Center, Case No. D2021-2871, Nov. 24, 2021, Capital Distribution Holding Inc. v. Hiro Bharwani, Horizons Group (London) Ltd.

Trademark