French Government v. France.com: the European Battlefield

The judicial battle between the French government and France.com, Inc., which occurs in France and the United States, also takes place before the European Union courts. France.com, Inc. had filed an application for European trademark. This application referred to a semi-figurative sign composed of i) the name “France.com” and, ii) a pentagon in the colors of the French flag in the center of which a white Eiffel Tower is embedded. This trademark application designates goods and services of classes 35, 39 and 41. The French government filed an opposition on the basis of an international trademark designating the European Union. This trademark consists of i) the denomination “France” and, ii) the Eiffel Tower on the first floor of which the French flag floats in a horizontal manner. This trademark refers to goods and services of classes 9, 35 and 41. In the first instance, the Opposition Division of the European Union Intellectual Property Office (EUIPO) rejected the opposition. Subsequently, the First Board of Appeal of EUIPO annulled the decision of the Opposition Division. France.com, Inc. lodged an appeal before the General Court. Following a typical presentation and analysis, the court rejected the appeal in a decision rendered June 28, 2018 (GC, 8th ch., 26 June 2018, France.com, Inc. c. European Union Intellectual Property Office (EUIPO), T-71/17).

Essentially, the court ruled as follows: the similar or identical nature of the services in question is not disputed (paragraph 95); “the signs at issue, considered as a whole, have only a low degree of visual similarity” (paragraph 70), but they are “almost identical” phonetically (point 77) and “conceptually identical” (point 86). This “particularly high degree of phonetic and conceptual similarity between the signs at issue, it must be held that there is a likelihood of confusion ” (paragraph 96).

Of the points discussed, two deserve our attention.

First, France.com, Inc. relied on its prior rights: its trade name, the domain name france.com, and trademarks of the European Union, the latter having been filed only a few days before the application for registration made by the French State. The court recalls, on the basis of Article 8 (2) of Regulation No 207/2009, that “any earlier rights relied on by the applicant in the present case have no bearing on the outcome of the dispute, given that the only rights to be taken into consideration in the opposition proceedings in question are the mark applied for and the earlier mark” (paragraphs 31 and 32). The court emphasizes that the protection of an industrial property right “protection requires constant vigilance on the part of the first person to file the mark, which entails taking, if need be, appropriate legal measures” (paragraph 35). Finally, the court continues:

“If the applicant holds rights that predate the EU mark on which the intervener relies, it is for the applicant, if it considers that it is so entitled and if it so wishes, to seek protection of those rights by means of opposition or cancellation proceedings or, where appropriate, before the competent national court in the context allowed by Article 110 of Regulation No 207/2009 (now Article 137 of Regulation 2017/1001). On the other hand, as long as the earlier EU mark on which the intervener relies is in fact protected, the existence of earlier rights is irrelevant where an EU trademark application is opposed, even if the EU mark applied for is the same as an EU mark that predates the EU mark on which the opposition is based ” (paragraph 36).

Second, France.com, Inc. raised the following questions for a preliminary ruling:

“(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?’” (Point 17).

The stratagem was clearly doomed to failure, as the General Court does not have jurisdiction. However, it would not be surprising that the Court of Justice of the European Union has to answer these questions sooner or later.

On September 22, 2017, the Paris Court of Appeal had annulled a French trademark “France.com”. France.com, Inc. now places all its hopes on the other side of the Atlantic, where US courts are asked to assert its rights related to its trademarks and its domain name (“Caution and Patience, Iptwins, 15 May 2018).