On 14 March 2007, the High Court of First Instance of Paris (‘Tribunal de Grande Instance’) rendered a judgement (1) condemning a Parisian, Mr Gilbert L., for registering, in March and July 2005, the trade marks “Paris 2016”, “Paris 2020”, “Paris 2024” and “Paris 2028”, and the domain names “paris2016.com”, “paris2016.fr”, “paris2020.com”, “paris2020.fr”, etc…
London stealing the chance to organise the Olympic games of 2012 from Paris (“Paris 2012”) in 2005, was bad enough; this second form of theft could not be tolerated. Paris and the Comité national olympic et sportif français (“CNOSF”, the French National Olympic and Sport Comity), a French association which represents the Olympic Movement in France, took action against Mr Gilbert L. at the end of 2005, claiming the infringement of CNOSF’s trade mark “Paris 2012’”.
In its judgement, the Paris Court first explains that it is customary for cities candidate for the Olympic games to authorise the use of their names, followed by the year of the relevant games. In January 2003, the CNOSF indeed applied for the registration of the French trade mark “Paris 2012” for the products and services in the international classes 1 to 45.
The Court annulled the trade marks registered by Mr Gilbert L., on the grounds of Article L.712-6 of the French Intellectual Property Code (IPC) which provides that “Where registration has been applied for, either fraudulently with respect to the rights of another person or in violation of a statutory or contractual obligation, any person who believes he has a right to the mark may claim ownership by legal proceedings”. The Court took into consideration the fact that the press had published numerous articles over the years on the Olympic games in Paris, designating the event as “Paris 2012”. The court also highlighted that it is well known that the games are in part financed by the licensing of trade marks to companies exploiting all types of products.
Following the same reasoning, the Court ruled that the registration of the domain names was fraudulent.
The action was also based on the infringement of the trademark “Paris 2012”. As the signs at stake were not identical (“Paris 2012” / “Paris 2016”, “Paris 2020”, “Paris 2024”, “Paris 2028”), the Court examined the infringement in the light of Article L.713-3 b IPC, that provides that “shall be prohibited, unless authorized by the owner, if there is a likelihood of confusion in the mind of the public, the imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration”. The provisions of Article L.713-3 b IPC are very close to those of Section 10(2)(a) of the UK Trade Marks Act 1994 (2). The Court found that the signs had visual and phonetic similarities, and that they were conceptually close, since all of them evoked the organisation of the summer Olympic games in Paris, and were based on the use of the year in which these sports events would be organised.
For the same reasons, the Court ruled that the registration of the litigious domain names also constituted acts of infringement by imitation.
The Court finally held that the registration and use of the term “Paris” undermined the rights of the City of Paris to its name, image and repute. Article L.711-4 h IPC indeed provides that “Signs may not be adopted as marks where they infringe earlier rights, particularly […] the name, image or repute of a local authority”.
As regards the sanctions, the Courts condemned Mr Gilbert L. to the payment of damages to the CNOSF: 5.000 euros for the fraudulent registration, and 5.000 euros for the acts of infringement. As the litigious trade marks had hardly been exploited, the Court condemned the out of line Parisian to the payment of a “symbolic euro” to the City of Paris.
In a ruling dated 27 October 2004, the Court of Appeal of Paris (3) had already rendered a judgement relating to the registration of the trade mark “Paris 2000” and of the domain name “paris2000.info”. The Court held that the person who registered and used the domain name “paris2000.info” had committed acts of unfair competition (parasitism) (4), by creating a website with no connection to Paris in general, and to the City of Paris in particular.
(1) TGI Paris, 14 mars 2007, 4e ch., www.legalis.net
(2) “A person infringes a registered trade mark if he uses in the course of trade a sign where because the sign is similar to the trade mark and is used in relation to goods or services identical or similar to those for which the trade mark is registered, there exists a likelihood of confusion in the part of the public, which includes the likelihood of association with the trade mark”.
(3) CA Paris, 4e ch., 27 octobre 2004, www.legalis.net
(4) French unfair competition law doctrine is close to the UK doctrine of passing off.
Doctor at Law
Lawyer, Member of the Paris Bar
Lecturer, University of Paris 1 (Sorbonne)