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01/08/2018 - Likelihood of confusion between FRANCE.COM and French Republic’s France mark

General Court finds likelihood of confusion between France.com and French Republic’s earlier France mark

Richard Milchior, partner and IP lawyer, published an article in the World Trademark Review.

In France.com Inc v EU Intellectual Property Office (EUIPO) (Case T-71/17, 26 June 2018), the General Court has upheld the decision of the First Board of Appeal of the EUIPO.

Context:

An individual applied for the registration of a figurative trademark consisting of an hexagon containing a stylised Eiffel tower and the word element ’FRANCE.com’ in Classes 35, 39 and 41. The hexagon is the way French people represent the territory of metropolitan France. The mark was transferred to a company called France.com Inc, located in Florida, United States, before the decision of the Opposition Division.

The opponent was the French republic, on the basis of an international registration designating the European Union and consisting of a stylised Eiffel tower with the word ’France’ below. This mark covered classes 9, 35 and 41.

The opposition was rejected and the decision was appealed. The Board of Appeal overruled the Opposition Division’s decision. The Board of Appeal considered that:
- the relevant public consisted of both consumers and professionals;
- the relevant public had a level of attention between average and high; and
- the likelihood of confusion should be assessed for the whole of the EU territory.

The board nevertheless agreed with the Opposition Division that the services were partly identical and partly similar.

Concerning the comparison of the signs, the board decided that they had an average degree of visual similarity due to their structure and common elements, even if the designs were different. Phonetically, the signs were identical since the word ’France’ is the only word in the earlier mark and is central in the opposed mark.

Conceptually, the signs were identical since both referred to France and included the Eiffel tower. Therefore, the signs were highly similar and a likelihood of confusion could not be excluded.

The decision was appealed.

Read the full article

Source : World Trademark Review

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    Richard Milchior