France.com Inc. v OHIM: trade mark protection extended to the concept and sound of ‘France’

It was less than a year ago that the US-based company France.com Inc. lost its registered rights in France to the  domain name and trade mark ‘France.com’ in favour of  the rights  held by the Republic of  France (here and here). This week, the American company lost another legal battle, this time before the General Court, as the court upheld the opposition to the EU registration of the mark filed by the French Republic (here). The Court found that the [now] EUIPO application for the trade mark ‘France.com’ is phonetically too similar and “conceptually identical” to an earlier mark held by the French government featuring the Eiffel tower with the word ‘france’ (see below). 

Procedural history

the mark applied for by France.com Inc. 

The  Republic of France opposed the registration of the mark ‘France.com’ before the [now] EUIPO in 2014. The opposition was based on an earlier international registration, designating the European Union, for similar classes of goods and services (here). The application for the mark ‘France.com’ was filed in classes 35, 39 and 41, whilst the mark held by the French Republic is registered in classes 9 16, 35, 39 and 41. 

Earlier mark held by the Republic of France

The opposition was rejected on 13 October 2015. Following an appeal by the French government, the decision was overturned by the First Board of Appeal of the EUIPO on 20 October 2016 (here). It is the appeal decision that is the subject of the referral to the CJEU filed by the France.com Inc in January 2017.

The decision

The applicant, France.com Inc, submitted the following four questions to the CJEU (para 17):

‘(i) In light of [Article] 8(2) [now Article 8(2) of Regulation 2017/1001] and Article 41(1) [now Article 46(1) of Regulation 2017/1001] of [Regulation No 207/2009] and Rule 15(2)(b) and Rule 17 of [Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark] [now Articles 2(2)(b) and 5 of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)], in opposition [proceedings], does the applicant, as the defendant to the opposition, have the right to invoke prior rights which could constitute prior rights to the earlier trademark used as a prior right in the opposition?

(ii) Does the French [Republic] have any kind of prior intellectual property right [in] the word ‘France’, which is not the official name of the French State and is just a geographical entity?

(iii) If the answer to the question (ii) is ‘no’, should the name ‘France’ be considered as a word which is in the public domain and [in respect of] which no one can claim any intellectual [property] right?

(iv) If the answer to the question (ii) is ‘yes’, should the fact that the French [Republic] [to date] has never claim[ed] any rights in the word ‘France’, except [as] against [the applicant] be considered as […] discrimination against the applicant?’

The ruling focuses on the similarity between the applied-for mark (‘FRANCE.COM’ plus design) and the registered mark (‘france’ plus design) in order to determine the likelihood of confusion  per  Article 8(1)(b) of Regulation No 207/2009. The Court considered three grounds for determining similarity: visual, phonetic and conceptual. It concluded that the two signs are not visually similar but that they are identical in their concept and “almost identical” in their sounds.

Visual similarity

The General Court disagreed with the Board of Appeal’s view that the two signs are “visually similar”. The Court reasoned that

“the mark applied for contains a pentagon and the abbreviation ‘.com’, elements that are not present in the earlier mark. By contrast, the earlier mark contains a figurative element depicting an Eiffel tower in black, a colour that does not appear in the mark applied for, and a scarf in blue, white and red, which is another element that does not appear in the mark applied for” (para 65)

As a result, “the signs at issue, considered as a whole, have only a low degree of visual similarity” (para 70).

Phonetic similarity

The General Court judgment confirms that the two marks are “almost identical” phonetically (paras 76, 77). This is because, upon seeing the signs, the Court assumes that

“many consumers will refer to the mark … by the word ‘france’ alone, as the abbreviation ‘.com’ will be perceived as referring to a website” (citing judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraphs 56 and 61).

On this point, the applicant attempted to argue that the sounds could not be identical or even similar because French speakers would read the earlier mark as ‘tour eiffel – france’ (indeed, an English speaker would understand the same sign as ‘eiffel tower – france’), whilst the applicant's mark reads as ‘france.com’. The court rejected this argument, stating that consumers were likely to regard the Eiffel tower as “a mere illustration of the word element ‘france’, without, however, saying its name when reading the earlier mark” and that “the abbreviation ‘.com’ will be perceived as referring to a website” (para 75-76). The conclusion of the court on this point thus rests on the phonetic identity of a single word: France.

Conceptual similarity

The General Court notes that the signs contain “almost exclusively elements that refer to the same concept”: the country of France. The ruling (re)states (the obvious) by noting that the word ‘france’ refers to the French Republic, and that the Eiffel tower and the colours blue, white and red are symbols “widely known to be associated with that State”. In the Court's view, the same goes for the hexagonal shape, which recalls the shape of the country – or at least, that of its continental metropolitan territory (para 82). Overall,  according to the General Court,  the mark applied for and the earlier mark refer to the same underlying concept: “France” (para 83). The addition of ‘.com’ does not alter the meaning of the word ‘france’ or the idea conveyed by the sign. On that basis, the Court concludes that the two signs are “conceptually identical” (para 85). 

concept: Batman
verdict: likelihood of confusion

This analysis of the ‘concept’ behind the sign circles back to an assessment of their visual similarity, as the General Court refers to the words, the colour palette and the shapes featuring in the two marks. How can this be when the General Court itself has already ruled out the visual similarity between the signs based on the same elements? The findings of the Court seem contradictory: they conclude that the design of the marks convey identical concepts without being graphically similar.

Conclusion: likelihood of confusion confirmed

As a result, the ruling confirms the likelihood of confusion due to “the particularly high degree of phonetic and conceptual similarity between the signs”. Recall – this similarity is limited to the sound and concept of a single word-- ‘france’, according to the General Court’s reasoning. This raises the question: is trade mark protection is being stretched too far?

The decision seems difficult to reconcile with settled case-law, which the General Court restates at the beginning of its judgment, according to which shortened names of States “may be used, in trade, to designate the geographical original or destination of goods or the place in which services are to be provided” in the General Court’s own words (para 51, citing MONACO T-197/3 (2015)). It follows from this that the shortened name of a State will be “recognized as having only weak, or even very weak, distinctive character” (para 53).

Does it mean that the word ‘France’ cannot be protected because it lacks distinctive character, but it can be protected on the basis of its concept and sound? This reasoning walks a fine line without providing any certainty for trade mark holders and future applicants as to where the protection of a word or concept begins and where it ends.

The ruling did not find relevant the applicant’s arguments according to which no proven instance of actual confusion had occurred during the 21 years in which the company has operated the website www.france.com. The applicant added to this that the French government itself had “supported and promoted” the company’s services for years and awarded it prizes for excellence (para 92).

The response of the Court on this point is far from clear. The judgment merely states that

cat conceptually confused

 “it is sufficient to recall that, according to settled case-law, the repute of a trade mark is relevant, in assessing the likelihood of confusion, only as regards the repute of the earlier mark”, citing Gitana v OHIM — Teddy (GITANA), T‑569/11 (2013) (para 98). 

But is the argument here about ‘repute’? The reference to Gitana v OHIM seems hardly relevant as the argument put to the Court by the applicant (Gitana) was that the mark it applied for had sufficient notoriety so as not to be confused with a similar earlier mark. The company France.com Inc. does not make quite the same argument – at least, not according to the summary of applicant’s argument reported in the judgment in one sentence (para 92). The American company points to a relatively long period of time during which they allege consumers never confused their services with those provided by the French Republic and that the French government supported the activities of the US company. All in all, the decision leaves a lot of questions in its wake.