EU case provides domain name trade mark lessons

The ruling came despite the EU General Court determining that there was only a slight similarity between the two marks in relation to the way they look.

Intellectual property law expert Ann Henry of Pinsent Masons, the law firm behind Out-Law.com, said the case highlights the limitations around unregistered rights and how using a domain name for many years will not necessarily provide businesses with a right to registration of a trade mark.

The French government owns an EU trade mark featuring the word 'france', in lower case, in an image containing a representation of the Eiffel Tower in Paris and wavy red and blue lines split by white – the three colours of the French flag.

Florida-based France.com argued that its 'france.com' mark should also be registered as an EU trade mark. The mark consists of the text france.com – with 'france' in block capitals – alongside a rough outline of mainland French shaded with the three colours of the French flag. France.com acquired rights to the mark from a man who previously owned the domain name, Jean-Noël Frydman.

Under EU trade mark laws, trade mark owners generally have the right to restrict the use of signs that are identical or similar to the ones they hold rights to for identical or similar goods or services that the a protected mark covers where the public is likely to be confused and link ownership of the sign to the trade mark holder.

The General Court, considering france.com's appeal against an earlier ruling by the EU Intellectual Property Office (EUIPO), determined that despite containing three elements in common – the word element ‘france’, a stylised image of the Eiffel tower and the colours blue, white and red – there was "only a low degree of visual similarity" between the two marks as a whole.

However, it said there was a "particularly high degree of phonetic and conceptual similarity between the signs" and that this meant that there is a likelihood that the average consumer would confuse the origin of the france.com mark as belonging to the French government.

The General Court considered the inclusion of the ',com' element of the france.com mark as having little relevance on its assessment.

Ann Henry of Pinsent Masons said: "In this case, the applicant for the figurative mark, Jean-Noël Frydman, had operated the website www.france.com for 21 years without giving rise to any issue. He sought to argue that his mark would be read as ‘france.com’ or ‘pentagon or hexagon – france’. The court disagreed." 

"The court noted that it is settled law that the word element ‘.com’ cannot alter the meaning conveyed by the word element ‘france’ as it does no more than convey the idea that the goods covered by the mark may be inspected or bought online. The court noted that the reputation of a trade mark is relevant only in assessing the likelihood of confusion as regards the repute of the earlier mark," she said.

"As consumer purchasing habits change and purchasing goods and services online increases this is an issue we will see coming up again. There is a balance to be struck between having a domain name that is easy to remember and having one that you can protect from an intellectual property rights perspective as the goodwill in your business grows. Companies that are smart will seek to strike a balance and made sure that assessment leaves them with a domain name that is easy for consumers to recall but distinctive enough to be capable of protection as a registered trade mark," Henry said.