TOUR DE FRANCE vs. TOUR DE FRANCE A LA RAME : Reputation of TOUR DE FRANCE limited to cycling competitions

This Kat was made aware that last summer, during the 2023 Tour de France, the Paris Court of Appeal handed down a ruling concerning this very cycling competition. What a coincidence, this Kat thought! More specifically, the Court of Appeal considered the question whether the “TOUR DE FRANCE” trade mark had been infringed by the registration of a later trade mark.

Facts

The French company “Société du Tour de France” (STF) is the owner of the French word trade mark "TOUR DE FRANCE", designating various goods and services in classes 1 to 45, notably the organisation of sporting events in class 41. Amaury Sport Organisation (ASO) holds a licence for this trade mark. Charles Hedrich, known for his sporting achievements, and his association RLT planned to organise a race called the “Tour de France à la rame” (rowing tour of France). C. Hedrich registered the semi-figurative French trade mark "TOUR DE FRANCE A LA RAME" on 26 October 2016, designating classes 9, 12, 39 and 41. On 7 March 2017, ASO and STF sent a letter of formal notice to C. Hedrich, but to no avail. Thus, ASO and STF brought proceedings before the Tribunal Judiciaire of Paris for trade mark infringement. In a ruling dated 16 April 2021, the court dismissed the plaintiffs' claims. ASO and STF appealed this decision.

"TOUR DE FRANCE A LA RAME" TM

Analysis

After confirming C. Hedrich 's interest in bringing this action, the Court of Appeal ruled on the infringement of the reputation of the Tour de France trademark. To do so, the court first recalled that, under the former Article L 713-5 of the French Intellectual Property Code, “the reproduction or imitation of a reputed trademark for goods or services that are not similar to those designated in the registration shall give rise to civil liability on the part of its author if it is of such a nature as to be prejudicial to the owner of the trademark or if such reproduction or imitation constitutes unjustified exploitation of the trademark”.

Reputation assessment

After recalling that the reputation of a trade mark is generally acquired progressively (T-345/08 and T-357/08), the Court proceeded to assess the reputation of the TOUR DE FRANCE trade mark [IPKat on trade marks with a reputation here, here and here].

A cycling Kat

The Court of Appeal welcomed the arguments of STF and ASO and upheld the repute of the "Tour de France" word mark, but only for services in class 41. Indeed, proof of a trade mark's reputation must be established by a combination of indicators. In this case, a definition in the Larousse dictionary, a decree classifying the Tour de France cycling race as a major event, a study highlighting the very high level of awareness of the sporting event in France and establishing the French public's high level of familiarity with it, as well as various surveys pointing in the same direction, were all elements that, in the view of the Court of Appeal, "establish the repute of the word mark TOUR DE FRANCE for the 'organisation of cycling events' and not for the other services in class 41". This is all the truer given that, in support of its decision, the court explicitly quoted a decision of the Board of Appeal which recognised that “the word mark TOUR DE FRANCE has acquired distinctive character through use only in respect of the 'organisation of cycling competitions' to the exclusion of other services in class 41".

Infringement assessment

Following the reasoning in C-487/07, L’Oréal, the Court validly added that use of a mark without due cause infringes a reputed trademark in three situations: (i) Taking unfair advantage of the distinctive character or repute of the earlier trade mark; (ii) Harm to its distinctive character; (iii) Tarnishment of its repute

Then the court confronted the two trade marks.

Visual similarity

The contested semi-figurative mark can be described as "consisting of a map of France with a green background, on which are represented, from top to bottom and from left to right, a chequered flag, a red rowing boat and the words TOUR DE FRANCE A LA RAME in blue". The word mark “TOUR DE FRANCE” only consists of three words. The Court of Appeal rightfully concluded that the overall visual similarity was rather weak, in particular because of the strong dominance of figurative elements in the contested mark, the poor legibility of the common words 'Tour de France', and the addition of the words "A LA RAME".

Phonetic similarity

The Court of Appeal found that although the two conflicting trade marks had 3 identical attacking words, they differed in rhythm and sound due to the addition of "A LA RAME".

Conceptual similarity

The Court noted that both trade marks were certainly geographically evocative of the Tour de France. However, the contested mark more precisely designates a journey by rowing boat and not by bicycle, which is reinforced by the visual of the rowing boat.

Comparison

In the end, upholding C. Hedrich's arguments, the Court rejected the claim that the reputed "TOUR DE FRANCE" trade mark had been infringed. The Court noted that "notwithstanding the similarity of the services at issue, the targeted public will not be led, in view of the differences noted, to establish a link between the earlier trade mark TOUR DE FRANCE, which has a reputation for the organisation of cycling events, and the semi-figurative trade mark TOUR DE FRANCE A LA RAME in issue”. Such a position is also reinforced by the fact that the expression "Tour de France" is not very distinctive as it is usually used to designate the route of a sporting event. This is all the truer given that similar variations exist in other countries (e.g., Tour of Spain, Tour of Italy). This decision is not surprising given that ASO and STF have at no time demonstrate properly any infringement. C. Hedrich exploited his own sporting reputation.

From a practical point of view, this ruling is a reminder of the need to pay close attention to evidence. As this is a factual assessment, involving the gathering of a body of evidence, it is important to multiply the sources (i.e., surveys, studies). An explicit link between the document, the trade mark and the designated goods or services shall appear. This ruling also reflects the non-absolute nature of reputed trademarks with regard to any registration of similar trade marks.