201810.08

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.
For its part, the Paris Court of Appeal considered that the arguments defended by Ruckfield and Nordis were powerless to erase the risk of confusion. According to the court, the trademark is on the fern and not on necessarily on the combination of the two elements (the fern and “All Blacks”). The court also noted the intrinsic similarity of the ferns, as well as their arrangement and positioning. The court came to the conclusion that the strong similarity between the sign used by Ruckfield and Nordis and the trademark was “likely to create a risk of confusion as to the origin of the goods bearing the sign in question“. The damage was estimated at 20,000 euros.

Parasitism, by the Color of the Rugby Polos Shirts

Parasitism is the “[t]he practice of living as a parasite on or with another animal or organism” (Oxford dictionary). A parasite is[a]n organism that lives in or on an organism of another species (its host) and benefits by deriving nutrients at the other’s expense(ibid.).
Under French law:
According to the principle of free trade, unfair competition, on the basis of tort, is punishable only by misconduct such as creating a risk of confusion in the minds of customers as to the origin of the product, or those, parasitic, aiming to benefit from the economic value of a third party that gives the latter a competitive advantage, which is the fruit of know-how, intellectual work and investments.
Thus constitutes a parasitic behavior, independently of any risk of confusion, the fact of placing oneself in the wake of a competitor by seeking to evoke, in the public mind, the elements that serve to identify this competitor in order to take advantage of its investments without cost.” (Paris Court of Appeal, Pole 5, 1st ch., June 19, 2018, No. 088/2018)
In the present case, Black was the color of the rugby polo shirts on sale on ruckfield.com. For the Court of Appeal, the use of the black color was “likely to evoke the New Zealand rugby team and provide Ruckfield and Nordis the benefit from its attractiveness“. In doing so, the Court of Appeal found parasitism. It estimated the damage relating to parasitism at 5,000 euros.

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