French government claims back « France.com » (as trade mark and domain name)

According to French Courts, the name of a country is like a person’s name. National governments can therefore prevent appropriation by private entities of their country’s name, even in the absence of a registered mark. This was the case of the French government, which succeeded in the ‘Atout France’ decision handed down by the Court of Appeal of Paris on 22 September 2017. According to French newspapers (here), the defendants have lodged an appeal against the decision before the French Supreme Court (Cour de Cassation). 

The French government (represented by the public ‘Atout France’ [Atout France’ is a national Economic Interest Grouping (EIG) dedicated to the development of tourism in France] and the French Ministry of Culture) disputed the registration by a private company of a series of marks using the word, or words, ‘France.com’ (see below). According to French jurisprudence, national states should be able to enjoy rights by virtue of prior use or ‘earlier rights’ (even in the absence of registration) over marks featuring the name of their national territory, even where  suffixes  such as ‘.com’ or ‘.net’ are affixed to it. 

The dispute at the heart of the ‘Atout France’ decision originally involved two private companies, a US company trading as « France.com Inc » and a Dutch company known as « Traveland Resorts ». France.com Inc initiated legal proceedings against Traveland Resorts following the latter’s registration for word and graphic marks featuring the sign « France.com » (see below) at the French and European levels. The companies subsequently settled their dispute via agreement, which included the assignment of the marks by Traveland Resorts to France.com Inc. The assignment was then registered by  OHIM and INPI, the French intellectual property office.

one of the complex marks disputed by the French government

Following the assignments, the French government initiated legal proceedings against the US company France.com, Inc., seeking to  assign the registered marks to the State of France  by virtue of the existence of an ‘earlier right’ in the word ‘France’ as per Article 711-4 of the French Intellectual Property Code (this provision is equivalent to Article 4(b) of the 2015 Trade Mark Directive, see here). 

Both the Paris Tribunal (Tribunal de Grande Instance) and the Paris Appeal Court (Cour d'Appel de Paris) accepted the government’s contention that the marks and the domain name violated the State of France’s right to its own name. The Court of Appeal stated, in ruling in favour of the government,  that

 "The appellation « France » constitutes for the French government an element of identity similar to the patronym of a natural person ; … this term refers to the national territory in [terms of] its economic, geographic, historic, political and cultural identity, the appellation notably promotes the range of products and services targeted by the registration of the marks at stake ; … the ‘.com’ suffix refers to an internet name domain extension and does not modify the [overall] perception of the sign."

The decision of the Court of Appeal then stressed that the risk of confusion by the public played a critical role in their conclusions:

"Considering therefore that the wider public would identify such goods and services as provided by the French government, or at the very least by an official supplier/service acting with the guarantee of the French government, …   the risk of confusion is further heightened by the stylised graphic representation of the geographic borders of France as part of the complex marks at issue;"

The Tribunal and the Court of Appeal both agreed that the examples of ‘earlier rights’ listed under Article L 711-4 (e.g.,  a protected appellation of origin, authors’ rights; or an industrial property right ) are not exhaustive; thus, a national government  may rely on this provision to defend the name of its territory on these grounds.  

The Court explained:

"Considering that the list of earlier rights provided under Article L 711-4 of the Intellectual Property Code is not exhaustive, the name « France » claimed by the State of France may constitute an earlier right predating the registration of the French marks at  issue  provided there is a risk of confusion in the public’s mind"

one of the complex marks disputed by the French government

As a result, the Court of Appeal  cancelled the French marks and assigned the name domain « France.com » to the State of France. The Court of Appeal also encouraged the French government to seek the cancellation of the registrations at the European level before the EUIPO following the relevant procedure.  This is because the French government had requested the Court to issue an injunction ordering France.com Inc. to withdraw its registration before the EUIPO. The Court of Appeal denied the request,  stating simply that there “was no ground” to order such withdrawal, and that the French government should seek to nullify  the European marks directly before the EUIPO. 

To date, the website ‘www.France.com’ is still live and managed by France.com Inc., which is consistent with the fact that the US company recently lodged an appeal before French Supreme Court. The French government is yet to take actions before the EUIPO in relation the European marks. Any updates readers have on the dispute(s) are most welcome!