Counterfeit and “Parasitism”: the All Blacks Tackled French Companies
New Zealand Rugby Union (NZRU) is the institution responsible for managing Rugby in New Zealand. It “ensures the operation and development of the national rugby team known as ‘All Blacks’ and conducts an active merchandising policy around the world to obtain the financial revenues necessary for the development of its activity“. It owns a semi-figurative trademark comprising two elements: the figurative element forms a stylized fern leaf of black color; the word element is composed of the expression “All blacks”. This trademark designates, in particular, class 25 (clothes and sports clothes) of the Nice Classification.
Ruckfield is a French company, created by a famous French rugby player, whose purpose is to design, manufacture and market clothing and accessories dedicated to rugby. Nordis is another French company that operates boutiques selling clothes, including those of Ruckfield. These two companies jointly operate the website ruckfield.com, where, at the time, the disputed black rugby polos shirts with ferns were available for sale.
NZRU considered that Ruckfield and Nordis infringed its trademark rights and brought them before the Paris Court of First Instance for counterfeiting and “parasitic behavior”. In its judgment of November 6, 2015, the Paris Court of First Instance condemned the defendants for counterfeiting. Requests for “parasitic behavior” were rejected. Ruckfield and Nordis appealed to the Paris Court of Appeal.
The Court of Appeal confirmed the first instance judgment on counterfeiting and reversed it on the issue of “parasitism” (Paris Court of Appeal, Pole 5, 1st ch., June 19, 2018, No. 088/2018).
Counterfeiting of the Fern Trademark
Ruckfield and Nordis tried to convince the court that there was no risk of confusion, notably through the following arguments:
their products are not technical sports clothing intended for the practice of sport but clothing known as “sportswear”;
they did not use the fern as a trademark but simply as decoration;
it is the combination of the fern and the verbal element “All blacks” that compose the trademark, not the fern considered separately;
considered alone, the fern is a “generic symbol” and, as such, it cannot be monopolized;
NZRU cannot claim the originality of a national symbol (that of New Zealand), especially since it is widely exploited by sports companies or federations as well as by food producers.
NZRU considers, on the contrary, that the risk of confusion is patent:
the fern emblem plays an essential distinctive function for the consumer in that it guarantees the origin of the product;
the presence of the trademark “Ruckfield” on the polos shirts cannot rule out any risk of confusion, the fern being always used in isolation and constituting a dominant element.