Copyrighting

So there you are in your company; an English speaking company working daily in the English language, doing your best, when suddenly you get a letter. The letter is from a French trademark lawyer advising you that a French company is the owner of a certain “trademark”. Strangely, the company is a French company, based in France and the trademark is registered for the country of France, however the trademark itself is an English language phrase.

The letter goes on to inform you that the French company has found you using “not their trademark” but one they feel is “confusingly similar” on your websites in respect to your product, which happens to be in competition to a product of the French company. The letter therefore gives you 48 hours to remove all references to the phrase, and, any other similar terms that could cause confusion. First the panic!! (wouldn’t we all) which is then followed by some research.

Your research leads you to the conclusion that the phrase you are using is in reality generic and descriptive! You think “How could such a phrase obtain registration with the INPI (the French trademark Registrars)”? Your further research shows that the French company’s trademark is also descriptive of their product and of the operation of the product!

Let me add here that article 711-2 a), b) and c) of European Trademark Law states that a trademark cannot be registered is the trademark is a generic term or phrase, or if it describes the product or an operating feature of the product.

Starting to feel “a little safer”, you then start to ask questions. But here comes the shock!

The INPI tell you that indeed in the English language the trademarked phrase is generic and also descriptive of the French company’s product, but during the application to register the trademark, the examiner would have looked at the trademark with the French language in mind and therefore, grant the trademark because in the French language, the English words of the trademark are not generic and could be descriptive of the product.

So your research goes further and you come across the second shock!

The nature of the internet means that certain terms, words and phrases automatically bridge country borders and by this, the chance of trademark infringement is high. Looking at the past judgments of the French court, you then find that indeed, the French court has upheld the claims of French companies claiming trademark infringement of this nature. Today, the past judgment rules have been slightly changed to state that “if the product is aimed at the French people”.

Going back to the letter received from the French lawyers, we can summarize the situation as follows:

A letter has been received regarding trademark infringement in respect to a trademark of a French company.
The trademark is registered in France and covers France.
The trademark is “in the English language”, a generic term.
The trademark is “in the English language”,descriptive of the French company’s product.
The trademark seems in breach of Article 711-2, but achieved registration because it was in English and therefore held no meaning in the French language.
The trademark infringement has been caused by the internet insofar as it bridges country borders.
French courts have seemingly past supported such infringement claims by French companies.

So what is the position of the company that received the trademark infringement letter?

Firstly looking at Article 711-2, one could ask “of what use is this European agreement, if a country can ignore a clause because of a language difference?”. We may further think “Is this an open door for people to make money?”.

Surely the company that received the trademark infringement letter would make a counter-claim to state that the trademark should not have achieved registration under article 711-2.

Then we might ask:

If a French court were to support the registration and refuse the cancellation of the trademarked ENGLISH LANGUAGE PHRASE based upon “the term or phase not being generic or descriptive in the French language” …. One could say that the French court refuses to give meaning to the words of the term or phrase being objected to.

… and in this situation, with the trademarked English language phrase not holding any meaning, it could be suggested that the claim of infringement could not be upheld, because to make a judgment on the point of “confusingly similar” the French court would have to recognize the meaning of the words in the English language, and this would be against the decision taken in the claim for cancellation.

On the other hand:

If the French court accepted the meaning of the trademarked English phrase in terms of the English language and agreed that; the term infringing the trademark was in fact “confusingly similar” …

… then it may be suggested that the court also accept the cancellation of the trademark and therefore dismiss the infringement case on this point!

The law is becoming more and more complex as global markets merge. But somewhere we must uphold common sense!

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About the Author:
robertphipps@hamburg-english.de
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