“El TORO LOCO”: when a Monster truck show amounts to both trade mark and copyright infringement

It is always interesting to see how the protection afforded by the various intellectual property rights fits together. Copyright and design rights are often invoked in parallel, particularly in relation to works of applied art [e.g. IPKat here]. This time, this Kat has found a recent decision issued by the Tribunal Judiciaire of Paris in a dispute concerning both copyright and trade mark infringement.

A Kat on a monster-truck

Facts

Feld Motor Sports Inc. is the organizer of televised motor sport events called "Monster Jam". Feld Motor Sports is also the owner of the word EUTM "El TORO LOCO" (No. 006995898) designating, in class 28, "die-cast trucks (toys), model trucks (toys) and collector trucks (toys)" and, in class 41, "entertainment services in the form of competitions and presentations of monster trucks".

El TORO LOCO can often be seen in those events.

Feld Motor Sports Inc. noted that the company H Z was also organizing monster trucks shows displayed on its website and social networks. Those shows featured a monster truck named “EI TORO Del FUEGO”.

In July 2019, a cease-and-desist letter was sent to the company H Z without much effect. On 20 April 2022, Feld Motor Sports brought a claim against the company H Z for trade mark and copyright infringement before the Tribunal judiciaire of Paris.

El Toro Loco

Analysis

To settle this dispute, the court divided its ruling into two main parts. The court first tackled trademark infringement. Then it addressed the copyright infringement claim.

Trade mark infringement

The court began its analysis by upholding the distinctiveness of the plaintiff's trade mark on the grounds that “the sign El TORO LOCO, consisting of a combination of words written in Spanish, was an arbitrary choice of designation that was not dictated by the characteristics of the services, the presentations of vehicles disguised as monster trucks and the goods that the
trade mark designates”. This analysis is in line with T-157/08, Paroc, [50].

The court then dismissed the application for revocation on the grounds of non-use within the meaning of Articles 18 and 58(a) EUTMR 2017/1001. Analysing evidence of use, the court was able to confirm the genuine use of “El TORO LOCO” trade mark. The presence of the monster truck under the “El TORO LOCO” sign at numerous performances and events in various EU Member States since 2001 was the main proof of use. Such an assessment process seems consistent with T-418/03, LA MER, [54] and T-434/09, Centrotherm, [25].

Infringement assessment

Relying on both Article 9 EUTMR 2017/1001 and Article L-717-1 of the French Code of Intellectual Property (CPI), the court proceeded to the comparison of the two signs.

Relevant public

The court found that the relevant public consisted of the public who watch entertainment featuring monster truck competitions and consumers of miniature monster trucks.

Visual similarity

The court underlined that the two signs have two identical catchphrase elements, namely "EI TORO", but differ in their final element. In this regard, the court noted that "the relevant public attaches preponderant importance to the sign's catchphrase and will be more sensitive to it".

Phonetic similarity

Both signs consist of a sequence of words in Spanish. The court noted that, while the first two words were identical, the number of syllables differed, creating a different rhythm. As a result, the court rightfully concluded that the overall impression was close but not similar.

Conceptual similarity

The signs both consist of a series of words in Spanish forming a whole with meaning. Although the court erred in pointing out that the common central element was "LOCO" and not "TORO", that term would be understood by the majority of the French public as it is remarkably close to the French word "taureau" (bull). Th public would therefore make the link with this mammal and bullfighting (“tauromachie” in French), which originated in Spain. The court therefore deduced a strong conceptual similarity.

In the end, by confirming the existence of a likelihood of confusion, the court held that H Z had infringed the trade mark "EI TORO LOCO". Indeed, because of the distinctiveness of “El TORO LOCO”, the identity of the services concerned [class 41], the conceptual similarity between the two signs, the public will attribute a common origin to the products and services concerned.

Copyright infringement

Relying explicitly on article L- 111-1 of the CPI, the court began its analysis by stressing the well-established principle that the protection of a work of the mind is acquired as a result of the creation of an original form, in the sense that it bears the imprint of the personality of its author and is not the banal repetition of a common background that cannot be appropriated. The court then added that it is up to the person claiming copyright protection to spell out the contours of its originality. This position is nothing new and is in line with well-established case law [IPKAT here, here and here].

Thus, the court proceeded to assess the demonstration of originality of the "EI TORO LOCO" monster truck. Upholding the arguments of the plaintiff, the court emphasised that “the combination of different bodywork elements representing a "raging" bull reveals arbitrary aesthetic choices by the author and is not the result of an obligation dictated by the vehicle's function”. This passage appears to be a non-explicit reference to CJEU case law (Football Dataco, C-604/10, at [39]). Elements such as the fact that “the vehicle has been reworked so that its appearance can be likened to that of an enraged bull, the wings have been placed so as to reveal an apparent jaw and teeth, giving an impression of aggressiveness and brute force”, are all elements that make it possible to characterise the originality of the work [IPKAT on originality here, here or here].

Therefore, as H Z's monster truck reproduced the combination of the specific and original features of the plaintiffs' monster truck, the court validly held that this was an infringement of the plaintiffs' copyright.

It might also have been worth taking action for infringement of copyright in the name “El TORO LOCO”. The court also specified that the assessment of copyright infringement did not require proof of a likelihood of confusion. This obvious reminder may seem pedagogical in the context of a dispute involving both trade mark and copyright infringement. It should be remembered that, although each of these rights may coexist in the same dispute, they are subject to their own requirements and rules.