The decision rendered by the Paris Judicial Court on 19 February is noteworthy as it addresses various issues, namely the fraudulent filing of a trademark, revocation of a trademark for non-use, trademark infringement as well as unfair competition and parasitism.
This provides an opportunity to recall these different notions and their constituent elements.
Facts
The claimant is the owner of two French trademarks “No” covering various clothing and accessory products, as well as decorative items. He decided to bring an action against the company NEM for trademark infringement as well as unfair competition and parasitism before the Paris Judicial Court, on the grounds that this company uses, without authorization, the sign of his trademarks “NO”. In defence, the company NEM seeks a declaration of nullity of the invoked trademarks on the grounds of fraud, as well as revocation of the “NO” trademarks for non-use.
On the fraudulent filing
The company NEM alleges that NO is the usual designation of the island of Noirmoutier and that the claimant proceeded with these filings solely to prevent competitors from using this sign. In support of its claims, the company NEM submits numerous documents establishing that the sign NO is commonly used to designate the island of Noirmoutier.
To determine whether fraud has indeed occurred, the Court recalls that “fraud implies an intention to harm”. However, the evidence submitted by the defendant was not deemed sufficiently relevant to demonstrate that the claimant intended to prevent the use of “NO”. The Court therefore dismisses the claim for annulment.
On revocation for non-use
The Court recalls that:
• genuine use of the trademark must be established for each of the goods or services covered by its registration and targeted by the revocation action,
• the use must be genuine and made as a trademark
The burden of proof of such use lies with the proprietor of the trademarks. The claimant therefore submits extracts of publications from the Facebook page of the shop “La Marine Hier”. Ultimately, the “No” trademarks are revoked for part of the goods covered in class 25 (in particular footwear, headgear, shirts), for all goods in class 20 (in particular furniture) and part of the goods in class 21 (in particular household or kitchen utensils; combs and sponges).
The defendant therefore partially succeeds on this ground.
On infringement
According to the claimant, the company NEM uses the sign NO identical to his trademarks, with the same stencil-style font (broken line) and for products similar to those covered by the registered trademarks.
In defence, the company NEM explains in particular that it does not use the disputed sign as a trademark since the sign NO refers to the abbreviation of the island of Noirmoutier, the use of which is widespread and that, therefore, it does not infringe the claimant’s rights. It adds that the so-called “stencil” typeface is also commonly used by traders on the island and on street name plates on the island.
Here, the company NEM raises a fundamental point in trademark infringement matters: the reproduction of a sign for identical goods is not sufficient to constitute infringement; such reproduction must also be made as a trademark.
The Court also recalls the other constituent elements of trademark infringement:
• the use must take place in the course of trade;
• it must be without the authorization of the proprietor;
• it must be made as a trademark;
• it must concern goods or services identical or similar to those for which the trademark is registered;
• it must create a likelihood of confusion in the mind of the public as to the origin of the goods and services
In the present case, the Court acknowledges that the company NEM uses the sign NO combined with other typical decorative elements with the aim of identifying the island of Noirmoutier designated by its usual abbreviation, as evidenced by the press articles produced in the proceedings.
The Court therefore considers that use of NO as a trademark is not established and consequently dismisses the infringement claim.
On unfair competition and parasitism
The claimant maintains that the use of the sign NO by the company NEM misleads customers as to the origin of the goods. He considers that “when a consumer purchases from a retailer supplied by the company NEM an item bearing the sign NO, he believes he is purchasing a product of the claimant, resulting in diversion of its clientele and causing both pecuniary and moral damage”.
The company NEM defends itself by arguing that it uses the sign NO solely as a reference to the usual abbreviation of the island of Noirmoutier. Moreover, since the claimant does not market souvenir items, there can be no likelihood of confusion.
To examine this plea, the Court recalls that unfair competition consists of conduct departing from the general rules of fairness and honest commercial practices applicable in business life. It requires proof of fault, namely the creation of a risk of confusion as to the origin of the product in the mind of customers. The assessment of this fault is carried out “in concreto”, which means with a case-specific approach to the facts.
Economic parasitism, for its part, is a form of unfair conduct consisting in “placing oneself in the wake of an economic operator in order to unduly benefit from its efforts, know-how, acquired reputation or investments made”.
In this case, the Court dismisses the claims based on unfair competition and parasitism on the grounds, firstly, that the sign NO has been used for many years by economic operators on the island and, secondly, that the claimant does not demonstrate that the company NEM knowingly sought to place itself in his wake.
Key takeaways
In the context of shellfish and crustaceans, this decision is useful for IP practitioners as it notably recalls that infringement of a trademark is not characterised solely by its unauthorized reproduction. It is indeed necessary to demonstrate additional elements which, in this case, were lacking on the part of the claimant.