201810.27

PAP (real estate ads) v. PapAuto (car ads): no risk of confusion, and the reputation of the “PAP” is not demonstrated

Éditions Neressis is a French company that runs a real estate website called “PAP, Particulier à Particulier”. This company owns the French trademark No. 1518035 “P.A.P. Particulier à Particulier” (classes 16, 35 and 41), the European Union trademark No. 006701973 “PAP” (classes 16, 35, 38, 41), and the domain name pap.fr. This website pap.fr is one of the most popular real estate websites in France. Éditions Neressis noticed, by searching for “pap” in the Google search engine, that papauto.com, which at that time provided second-hand car ads, arrived in the fourth position in the list of results. The usual investigations revealed that papauto.com was operated by a French company called Webmastore. Éditions Neressis sued Webmastore for trademark infringement (a French trademark and a European trademark), and infringement on its pap.fr domain name.
While the facts of this case are relatively simple, the procedure itself was long and complex. We will stick to the essential.
The Paris court of first instance rendered its judgment on 27 September 2013 (Paris Court of First Instance, 3rd ch., 2nd sect., 27 Sept. 2013, RG N ° 11/14323). The court ruled that by registering and operating the domain papauto.com, Webmastore had “committed acts of parasitism by infringing the domain name” pap.fr. This wording is rather unusual in French cases since the claim relating to parasitism is ordinarily separated from the claim relating to infringement of a distinctive sign such as a domain name, the two claims giving rise to separate remedies. Be that as it may, Webmastore was prohibited from registering and/or operating any domain name including “pap”. As for Éditions Neressis’ claim for infringement of its two trademarks, they were rejected. Both parties lodged an appeal before the Paris Court of Appeal.
The Paris Court of Appeal rendered its judgment on January 16, 2015 (Paris Cout of Appeal, Pôle 5, 2nd ch., Jan. 16, 2015 (RG No. 14/03650).) It partially reversed the judgment of September 27, 2013. Éditions Neressis has again been dismissed from its claims for trademark infringement. Therefore, Éditions Neressis lodged an appeal before the Cour de cassation (French supreme court), but the provisions of the judgment of the Court of Appeal relating to the French trademark were not the subject of the appeal. Accordingly, the appeal was related only to the infringement of the European trademark.
On January 25, 2017, the Cour de cassation overturned and annulled the judgment of the Court of Appeal in particular in that it had rejected Éditions Neressis’ claim for the infringement of its European trademark “PAP”. “(Cass. com., Jan. 25, 2017, No. 15-14.804). The case and the parties were, therefore, referred again to the Paris Court of Appeal, otherwise composed.
The Paris Court of Appeal delivered its judgment on 18 September 2018 (Paris Court of Appeal, Pôle 5, 1st sect., 18 Sept. 2018, No. 113/2018).
Before the court, Éditions Neressis maintained that Webmastore had committed infringement within the meaning of Article 9.1 (a) and (b) of the Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark. This article provides:
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trademark.”
First, the court summarized the reasons for the decisions rendered by the Cour de cassation and the first Court of Appeal.
Second, the court compared the signs and the services in question, namely the European trademark “PAP” (classes 16, 35 including real estate ads, 38, 41) and “papauto”, used for car advertisements. The court dismissed the claim based on Article 9.1 (a) of Regulation 207/2009, given that the two signs “PAP” and “papauto” are not identical.
Accordingly, the court had to consider the signs and services in light of Article 9.1 (b) of Regulation 207/2009. As regards the comparison of the services, the court noted that they are distinct (real estate advertisements on the one hand and automobile advertisements on the other hand), but also underlined “a certain complementarity“. As for the two signs, the court observed that, on the website papauto.com, “PAP” is always on prefix position, which is, inter alia, an argument in favor of the existence of a risk of confusion. However, the court considered that the prefix “pap” is systematically followed by the suffix “auto”, so that, visually, phonetically and conceptually, the competing signs differ. One should highlight that the second Court of Appeal carried out a detailed visual, phonetic and conceptual analysis, contrary to the examination made by the first Court of Appeal. Finally, the court added that the differences between the “PAP” trademark and “papauto” cannot be denied by the complementarity of the services. To conclude, the claim for infringement on the basis of Article 9.1 (b) of Regulation 207/2009 was therefore rejected.
Yet, Éditions Nemerris still had the option to benefit from the reputation of its “PAP” trademark on the basis of Article 9.1 (c) of Regulation 207/2009, which provides that:
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(…)
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.”
However, according to the judgment rendered by the second court of appeal, Éditions Nemerris did not make any reference to Article 9.1 (c). Only Article L. 713-5 of the French Code of Intellectual Property was mentioned in the judgment, and in a pithy way.
In any event, the trademark owner must demonstrate the reputation of its trademark within the meaning of Article 9.1(c). In the present case, the court indicates that Éditions Nemerris failed to prove such a reputation.
In the end, the court rejected Éditions Nemerris’ request to establish the existence of an infringement of its European trademark “PAP”. Demonstrating the reputation of a French or European trademark is a challenging task that requires recurrent and rigorous monitoring on the territories concerned.

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