On March 10 2014 the Bordeaux Court of Appeal denied a party's claim that sought to establish the existence of an unregistered well-known trademark, for failure to provide sufficient evidence that the trademark was actually well known by a significant part of the relevant public and within a substantial part of the French market.(1) The main evidence put forward to establish the existence of the unregistered trademark was the reference to a domain name and its associated website.
On October 2 2012 the defendant filed a trademark application for the term 'ALPHAZOME' for products and services relating to the construction of 'zomes'. In this context, the term 'zome' refers to a building using unusual geometries.
On December 4 2012 the claimant – owner of the domain name 'alphazomes.org' since October 29 2007 – filed an opposition against the trademark application with the IP office (INPI), arguing that the trademark could not be registered as the claimant had prior rights in an unregistered well-known trademark for the term 'ALPHAZOMES' in line with Article L 712-4 of the IP Code. To support his claim, the claimant produced information relating to the domain name, the associated website, the number of visitors per year, and references to Alphazomes and the domain name in several books and articles and a DVD.
On February 5 2013 the INPI's director denied the opposition on the basis that the claimant had failed to substantiate that ALPHAZOMES was a well-known unregistered trademark. On February 26 2013 the claimant lodged an appeal with the Bordeaux Court of Appeal and filed a final brief on January 31 2014, seeking cancellation of the INPI's decision and confirmation of the fact that the domain name constituted a prior right in accordance with Article L 711-4 of the IP Code. The Bordeaux Court of Appeal denied the appeal.
The court of appeal considered that the claimant's evidence was insufficient to establish that ALPHAZOMES was an unregistered well-known trademark as he had failed to prove that the unregistered trademark on which he sought to rely was actually well known by a significant part of the relevant public and within a substantial part of the French market. The court also took into account the intrinsically limited relevant public with an interest in alternative houses.
The court considered, for instance, that the claimant had failed to demonstrate that the number of visitors to the website associated with the domain name (between 15,000 and 19,000 per year) was high in comparison to similar websites relating to alternative housing (no comparative figures were produced). The court also criticised the fact that the claimant had failed to provide evidence of the coverage and circulation of the magazines, DVD and articles that referred to the domain name and the claimant's services.
Additional arguments – which were presented only in the final brief for the appeal – were dismissed for procedural reasons. In passing, the court of appeal commented on the additional arguments, which were based on an alleged violation of prior rights in the domain name, and explained that while under certain circumstances this could constitute grounds for the cancellation of a trademark, this was not within the INPI's remit in the context of opposition proceedings and thus could not be considered by the court of appeal.
This decision offers a useful illustration of the requirements for establishing the existence of an unregistered well-known trademark and highlights the fact that thorough and detailed documentary evidence is necessary. While the claimant's demands were refused in this case, an opposition could succeed if the existence of an unregistered well-known trademark is evidenced satisfactorily. The decision appears to show that such evidence could be based on a domain name and associated website, subject to genuine renown and high levels of traffic.
For further information on this topic please contact Vincent Denoyelle at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (firstname.lastname@example.org).The Hogan Lovells International LLP can be accessed at www.hoganlovells.com.
(1) The decision (in French) is available here: www.legalis.net/spip.php?page=jurisprudence-decision&id_article=4094.