Trademarks in France – Trademarks in Europe
Posted in Uncategorized on March 28th, 2011 by admin – 664 Comments
So there you are in your provider; an English speaking business working every day in the English language, performing your finest, when suddenly you get a letter. The letter is from a French trademark lawyer advising you that a French business is the owner of a specific “trademark”. Strangely, the provider is a French provider, based in France and the trademark is registered for the country of France, yet the trademark itself is an English language phrase.
The letter goes on to inform you that the French business has discovered you utilizing “not their trademark” but 1 they really feel is “confusingly comparable” on your internet sites in respect to your product, which occurs to be in competition to a product of the French organization. The letter consequently gives you 48 hours to remove all references to the phrase, and, any other comparable terms that may possibly trigger confusion. 1st the panic!! (wouldn’t we all) which is then followed by some analysis.
Your study leads you to the conclusion that the phrase you are utilizing 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 firm’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 not 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 begin to ask questions. But 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 corporation’s product, but throughout the application to register the trademark, the examiner would have looked at the trademark with the French language in mind and as a result, grant the trademark simply because in the French language, the English words of the trademark are not generic and may possibly be descriptive of the product.
So your analysis goes further and you locate the second shock!
The nature of the world wide web means that specific terms, words and phrases automatically bridge country borders and by this, the chance of trademark infringement is high. Searching at the past judgments of the French court, you then locate that indeed, the French court has upheld the claims of French firms claiming trademark infringement of this nature. Right now, the past judgment rules have been slightly changed to state that “if the product is aimed at the French men and women”.
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 firm.
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 provider’s product.
The trademark appears in breach of Write-up 71one-2, but achieved registration since it was in English and for that reason held no meaning in the French language.
The trademark infringement has been caused by the web insofar as it bridges country borders.
French courts have seemingly past supported such infringement claims by French corporations.
So what is the position of the firm that received the trademark infringement letter?
Firstly Searching at Write-up 71one-2, 1 may well ask “of what use is this European agreement, if a country can ignore a clause simply because of a language distinction?”. We may well 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 will need to not have achieved registration under write-up 71one-2.
Then we may well 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 being generic or descriptive in the French language.” 1 may possibly say that the French court refuses to give meaning to the words of the term or phrase being objected to.
And in this scenario, with the trademarked English language phrase not holding any meaning, it may perhaps be suggested that the claim of infringement might not be upheld, mainly because to make a judgment on the point of “confusingly comparable” the French court would have to recognize the meaning of the words in the English language, and this would be against the choice taken in the claim for cancellation.
Yet:
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 might possibly 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 becoming a lot more and a lot more complex as global markets merge. But somewhere we should really uphold frequent sense!
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