In an October 14 2014 decision, the Paris Court of Appeal ruled that while the term 'SeLoger' on its own was descriptive in relation to real estate, it was distinctive when combined with the top-level domain (TLD) '.com'.

Facts

The claimant, Pressimmo On Line and SA Se Loger.com, was a group of companies operating the website www.seloger.com, the first French property website. The defendant, Janny B, was an estate agent based in the Paris suburbs.

The claimant registered several trademarks incorporating the term 'SeLoger' in France. The trademarks were registered in a number of international classes – some specifically designating property-related services and some designating other services, as well as goods (in Class 16).

Subsequently, the defendant registered the domain names 'seloger-pas-cher.com', 'selogermoinscher.com' and 'se-logerimmo.com' and used these domain names in relation to her property business.

The claimant sent a letter to the defendant asking her to cease using terms that reproduced its trademarks, to no avail. The claimant then initiated proceedings before the Paris Civil Court on the grounds of trademark infringement and unfair competition. The rights relied on by the claimant were not limited to its trademarks, but also included its domain name 'seloger.com' and its company name.

In her response brief, the defendant requested cancellation of the trademarks, arguing that they were merely descriptive of the services and goods covered by the respective marks.

On March 15 2013 the Paris Civil Court wholly rejected the defendant's request for cancellation of the trademarks and accepted the claimant's claim that the defendant had infringed its trademarks as well as its rights in the domain name 'seloger.com'.

On May 27 2013 the defendant appealed the decision.

Decision

The Paris Court of Appeal partially upheld the lower court's decision, overruling it on most points. The Paris Court of Appeal did not consider that there was any act of infringement or unfair competition on the defendant's part and overturned the lower court's decision on this point. In addition, the Paris Court of Appeal found that some of the trademarks consisting of the terms 'SeLoger' and 'Se Loger' should be partially cancelled – in respect of several services under international Classes 36, 37, 39 and 42 – for being descriptive. However, the court decided that for these very same services, the trademarks consisting of 'SeLoger.com' were not descriptive and could thus not be cancelled. The court's reasoning was based on the fact that the domain name 'seloger.com' and associated website had been extensively used before the claimant applied for the 'SeLoger.com' trademarks. The goodwill and fame of the website at the time of application for the 'SeLoger.com' trademarks meant that these trademarks had already acquired distinctiveness.

Comment

Interestingly, the Paris Civil Court (albeit two different sections) issued two contradictory decisions at the end of 2013 in relation to another trademark consisting of a generic term and a TLD ('vente-privee.com'), ordering the cancellation of the trademark in one decision (November 28 2013) and declaring that the trademark was well known in another (December 6 2013). This inconsistency will probably be harmonised by the Paris Court of Appeal, possibly in light of its October 14 decision.

Vincent Denoyelle

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