France Trademark Prevails Against Dot-Com Doppelganger

(CN) – The European General Court backed the government of France on Tuesday in its challenge to the trademark registration of a travel company called France.com.

Jean-Noel Frydman applied to register the France.com mark in 2014 but subsequently assigned his rights to an American company with the same name.

Since France had registered its own trademark with the European Union Intellectual Property Office in 2010, it filed a notice of opposition.

After the EUIPO sided with France, France.com sought to have that decision annulled.

Based in Luxembourg, the Eighth Chamber of the General Court confirmed Tuesday that France.com’s sign cannot be registered as an EU trademark.

The ruling notes that there are visual differences between the two signs.

France.com’s sought-after mark contains a pentagon and the .com abbreviation, while France’s mark includes a cartoon of the Eiffel Tower, clad in a patriotic scarf.

It was the phonetic comparison, however, that doomed France.com’s case.

The applicant is therefore incorrect to claim that the earlier mark will be read by an English speaker as ‘eiffel tower — france’ and by a French speaker as ‘tour eiffel — france’. Moreover, as the Eiffel tower is, as the Board of Appeal was right to observe, a world-famous French monument, consumers will be likely to regard it as a mere illustration of the word element ‘france’, without, however, saying its name when reading the earlier mark.

“The applicant is … incorrect to claim that the earlier mark will be read by an English speaker as ‘eiffel tower — france’ and by a French speaker as ‘tour eiffel — france,’” the ruling states. “Moreover, as the Eiffel tower is, as the Board of Appeal was right to observe, a world-famous French monument, consumers will be likely to regard it as a mere illustration of the word element ‘france’, without, however, saying its name when reading the earlier mark.”

The ruling calls the two signs conceptually identical as well.

“It is clear that the signs at issue contain almost exclusively elements that refer to the same concept,” the ruling states. “The word element ‘france’ refers to a state, namely the French Republic. The figurative elements in the signs at issue refer to a symbol widely known to be associated with that state, namely the Eiffel tower and the colors blue, white and red. The same holds true for the figurative element, present only in the mark applied for, depicting a pentagon, the shape of which brings to mind the ‘Hexagon’, an expression designating the continental part of metropolitan France.

“It follows that, as they refer to the same concept, represented by the word element ‘france’ and the figurative element depicting the Eiffel tower, that is to say, France, the signs at issue are conceptually identical, and the element ‘.com’, present only in the mark applied for, is not sufficient to enable those signs to be differentiated conceptually.”

The ruling also calls it well settled “that the word element ‘.com’ cannot alter the meaning conveyed by the word element ‘france’ … as it does no more than convey the idea that the goods covered by the trade mark applied for may be inspected or bought online.”

“Given the particularly high degree of phonetic and conceptual similarity between the signs at issue, it must be held that there is a likelihood of confusion,” the ruling says later.

France.com told the court that that it has operated the website www.france.com for 21 years, but Monday’s ruling notes that “the repute of a trade mark is relevant, in assessing the likelihood of confusion, only as regards the repute of the earlier mark.”

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