Trademarks in France – Trademarks in Europe

So there you are in your corporation; an English speaking enterprise working everyday in the English language, performing your greatest, when suddenly you acquire a letter. The letter is from a French trademark lawyer advising you that a French enterprise is the owner of a particular “trademark”. Strangely, the corporation is a french organization, based in France and the trademark is registered for the country of France, on the other hand the trademark itself is an English language phrase.

The letter goes on to inform you that the french provider has discovered you making use of “not their trademark” even so 1 they really feel is “confusingly comparable” on your web pages in respect to your product, which occurs to be in competition to a product of the french provider. The letter thus gives you 48 hours to eliminate all references to the phrase, and, any other comparable terms that could possibly trigger confusion. 1st the panic!! (wouldn’t we all) which is then followed by some analysis.

Your analysis leads you to the conclusion that the phrase you are making use of is in fact generic and descriptive! You believe “How may perhaps such a phrase acquire registration with the INPI (the French trademark Registrars)”? Your further study shows that the french organization‘s trademark is also descriptive of their product and of the operation of the product!

Let me add here that write-up 71one-2 a), b) and c) of European Trademark Law states that a trademark can’t be registered is the trademark is a generic term or phrase, or if it describes the product or an operating feature of the product.

Beginning to really feel “a small safer”, you then commence to ask questions. However here comes the shock!

The INPI tell you that indeed in the English language the trademarked phrase is generic and also descriptive of the french organization‘s product, even so in the course of the application to register the trademark, the examiner would have looked at the trademark with the French language in mind and thus, grant the trademark mainly because in the French language, the English words of the trademark are not generic and may possibly be descriptive of the product.

So your investigation goes further and you get the second shock!

The nature of the online indicates that particular terms, words and phrases automatically bridge country borders and by this, the opportunity of trademark infringement is high. Searching at the past judgments of the French court, you then get that indeed, the French court has upheld the claims of french providers claiming trademark infringement of this nature. Currently, the past judgment rules have been slightly changed to state that “if the product is aimed at the French persons”.

Going back to the letter received from the French lawyers, we can summarize the scenario as follows:

A letter has been received concerning trademark infringement in respect to a trademark of a French business.

The trademark is registered in France and covers France.

The trademark is “in the English language”, a generic term.

The trademark is “in the English language”,descriptive of the French business’s product.

The trademark appears in breach of Post 71one-2, even so achieved registration given that it was in English and thus held no meaning in the French language.

The trademark infringement has been caused by the world wide web insofar as it bridges country borders.

French courts have seemingly past supported such infringement claims by French businesses.

So what is the position of the firm that received the trademark infringement letter?

Firstly Searching at Post 71one-2, 1 may perhaps ask “of what use is this European agreement, if a country can ignore a clause for the reason that of a language distinction?”. We may perhaps further believe “Is this an open door for individuals to make money?”.

Surely the provider that received the trademark infringement letter would make a counter-claim to state that the trademark should certainly not have achieved registration under write-up 71one-2.

Then we could possibly ask:

If a French court had been to support the registration and refuse the cancellation of the trademarked ENGLISH LANGUAGE PHRASE based upon “the term or phase not becoming generic or descriptive in the French language.” 1 may say that the French court refuses to give meaning to the words of the term or phrase becoming objected to.

And in this scenario, with the trademarked English language phrase not holding any meaning, it might possibly be suggested that the claim of infringement may well not be upheld, simply because to make a judgment on the point of “confusingly comparable” the French court would need to recognize the meaning of the words in the English language, and this would be against the choice taken in the claim for cancellation.

Nonetheless:

If the French court accepted the meaning of the trademarked English phrase in terms of the English language and agreed that; the term infringing the trademark was in reality “confusingly comparable.”

Then it could be suggested that the court also accept the cancellation of the trademark and as a result dismiss the infringement case on this point!

The law is being additional and a lot more complicated as global markets merge. Nonetheless somewhere we should uphold prevalent sense!

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