Facts
Decision
Comment

On January 17 2014 the Paris Tribunal of First Instance ruled that while a domain name can constitute a prior right which could be opposed to a future trademark application, the domain name in question actually needs to be used and not merely registered. This confirms prior (although scarce) decisions from the French courts.(1)

Facts

The claimant was Chinese company, Hong-Kong Shadong Singapore Diamonds Services Ltd, which specialised in the online sale of diamonds and other precious stones. The defendant was a French company which specialised in the design and development of e-commerce websites.

The claimant had commissioned the defendant to design its e-commerce website under the domain name 'www.mazaldiamond.com'. The defendant registered the domain name 'mazaldiamond.com' with GoDaddy on February 7 2009 and transferred it to the claimant shortly thereafter.

On July 26 2009 the defendant filed a trademark application for the term 'MAZAL' in International Classes 14, 35 and 42. In addition, the defendant registered a number of domain names, including the word MAZAL or MASAL.

The website at the domain name 'www.mazaldiamond.com' was launched on March 24 2010.

Subsequently, the commercial relationship between the parties deteriorated and came to an end. The claimant filed court proceedings in Paris against the defendant, as the claimant considered that the trademark and the domain names registered by the defendant had been registered fraudulently and in violation of its prior right to the domain name. The claimant thus requested, among other things, the cancellation of the trademark and domain names registered by the defendant.

The claimant based its claim on Articles L711-4 and L714-3 of the IP Code, which respectively provide that:

"It is not possible to register as a trade mark a sign which infringes a prior right, including, inter alia: a) A registered trade mark; b) A company name if there is a likelihood of confusion in the mind of the public; c) A trade name that is known nationwide and if there is a likelihood of confusion in the mind of the public and a trade mark registered in violation of articles L711-1 to L711-4 will be declared null and void by courts ."

Decision

The Paris Tribunal of First Instance rejected the claimant's requests.

The tribunal considered that while domain names are not specifically listed under Article L 711-4 of the IP Code, a domain name can be relied on as part of the prohibition of Article L711-4 of the code, provided that the domain name is actually used in the form of a website.

Since the website in question was launched only after the defendant had applied for the MAZAL trademark, the claimant was not in a position to rely on the domain name as a prior right to request the cancellation of the MAZAL trademark or of the various MAZAL and MASAL domain names.

Comment

While this decision is in line with precedents based on similar facts, the key question of whether a domain name is used will be assessed on a case-by-case basis; registering a domain name may not suffice, as it may not amount to a genuine use of the domain name – a website could consist only of a blank page or a page under construction. In addition, domain names will likely have to be used for the same or similar goods and services covered by the trademark, or there should be at least a likelihood of confusion between the use of the domain name and the trademark.

This decision shows the importance of not delaying the genuine use of a registered domain name and applying for the registration of a trademark as soon as possible, as it will constitute a prior right, regardless of use (unlike a domain name). In short, solely relying on a domain name as a prior right could prove difficult and is best avoided if possible.

For further information on this topic please contact Vincent Denoyelle or David Taylor at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (vincent.denoyelle@hoganlovells.com or david.taylor@hoganlovells.com).The Hogan Lovells International LLP can be accessed at www.hoganlovells.com.

Endnotes

(1) The decision (in French) is available at: https://www.legalis.net/spip.php?page=jurisprudence-decision&id_article=4002