(Paris Court of Appeal, 15 October 2010)
On 26 May 2006, Messrs. B. and V. registered the trademark "BULLE DE SOINS" to cover beauty care services. Subsequently, the name was used as a trading name by the beauty institutes "Lina", "KNB" and "CMA." The company Kenzo Parfums, proprietor of the earlier word mark "LABULLEKENZO", was informed of this registration and brought an action before the Tribunal de Grande Instance of Paris against Messrs. B. and V. for infringement by imitation of the brand "LABULLEKENZO" and against the beauty institutes "Lina", "KNB" and "CMA" for unfair competition.
In its decision of 22 September 2009, the Tribunal de Grande Instance of Paris ruled in favour of Kenzo Parfums, ordering damages of €15,000 to be paid by Messrs. B. and V., who were held jointly and severally liable, and another €15,000 to be paid by the three institutes.
However, in a decision dated 15 October 2010, the Paris Court of Appeal totally reversed the lower court’s decision of a year earlier.
The Court of Appeal took the view that the trademark "BULLE DE SOINS" was not an imitation of the word mark "LABULLEKENZO" because even though it contained the word "bulle" [bubble], the brands were differentiated both visually, because of their specific composition, and phonetically. It also held that conceptually, the definite article "LA" and the proper noun "BULLE" referred to the specific universe of the products of the "KENZO" brand, as opposed to the trademark at issue, "BULLE DE SOINS", which referred to an area devoted to bodily well-being.
Moreover, the Court emphasized that the adoption by the three Parisian beauty institutes of a different trading name and of a domain name corresponding precisely to the trading name of the institutes ("Lina", "KNB" and "CMA") was not likely to create confusion in the minds of customers, making them believe that there was a network of beauty treatment centres associated with the Kenzo group.
In its opinion, the Paris Court of Appeal was careful to remind the Tribunal de Grande Instance of Paris of the fundamental principles in the area of infringement by imitation of trademark, namely that "the simple association between two trademarks which the general public may make on the basis of their semantic content is not sufficient in itself to conclude that a risk of confusion exists" and that the risk of confusion must be assessed "globally" and must be grounded "with respect to the visual, auditory or conceptual similarity between the trademarks in question, on the overall impression produced by the trademarks" (CJCE, 11 November 1997 SABEL/PUMA).