French trademark applications: the usefulness of of a prior rights search on domain names

The Ordonnance n° 2019-1169 of the 13 November 2019 (legifrance.gouv.fr) concerning trade marks in respect of goods or services has been published in the French Journal Officiel of the 14 November 2019.

This law is the final transposition of the European Directive “Trademark Reform Package” of 2015. One of the novelties is the explicit mention of domain names among the prior rights able to be opposed against a trademark.

Indeed, the new article L. 711-3.-I of the French Intellectual Property Code explicitly set that a trademark cannot be registered, and may be cancelled if it infringes prior rights in France. Among the listed rights are domain names with a “more than local” reach, if there is a risk of confusion in the mind of the public. The domain names are mentioned in the same subparagraph than business names and commercial signs.

Previously, domain names were not explicitly mentioned in the non-exhaustive list of the article L. 711-4 of the French Code of Intellectual Property. However, an established case-law considered that in application of the article L. 711-4, a trademark could be cancelled on the grounds of a prior domain name. The domain name owner needed to establish its rights on the concerned name, to demonstrate the risk of confusion in the public mind, and to prove an effective use of the said domain name, prior to the trademark application. The effective use could notably be based on the following :

  • Public use of the domain name (TGI Paris, 9 juillet 2002, Sherlocom);
  • Frequency and duration of the visits on a website during a given period of time (TGI Paris, 13/06/2003, Provoyance);
  • The ability of the domain name to effectively address clients, customers by being actively used (CA Paris, 15 mai 2012, Juristemploi);
  • Extracts from newspapers mentioning the address of the websites, through articles, advertising or clients feedback (CA Paris, 30 janvier 2013, Cigarelec).

As of today, the domain name with a “more than local” reach, if there is a risk of confusion in the mind of the public, is listed (inpi.fr) in the available grounds for an opposition against a French trademark application on the French intellectual property office website (Institut National de la Propriété Industrielle, INPI).

How the new subparagraph will be interpreted during opposition proceedings and before the competent courts remain to be seen in the long run. This reform is a good opportunity to remind that prior rights searches conducted among domain names inter alia — are recommended when considering a trademark application. These searches allow to identify relevant prior rights that might threaten the considered filing, and subsequent trademark.

Through its dedicated DETECTIVE platform, IP Twins provides a solution that allows to detect prior domain name registrations that are identical or similar to a trademark, registered or not. Our reports can be subject to initial sorting of the results as well as analysis and recommendations performed by an IP Lawyer.

Your IP TWINS account manager is at your disposal to assist you on these matters.

About IP Twins

IP Twins is an ICANN-accredited domain name registrar with 15 years of experience in domain name strategy and management. We represent trademark holders in UDRP proceedings.

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Should you need to complete these investigations, our team based in China can help.

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