In a recent decision, the French Court of Cassation (the highest civil court) relied on the principle that the more famous a trade mark is, the more distinctive it must be considered, to uphold Puma’s challenge to a trade mark application. The justification is that the distinctiveness of a famous trade mark reinforces its protection as it increases the likelihood of confusion with other trade marks.
What was the dispute about?
Puma, the well-known sports clothing and equipment company, objected to an application for a trade mark in France. This trade mark consisted of the drawing of a feline viewed from the side, with the word “Acoumair”. It was for goods in Class 25, covering clothes, shoes and accessories.
PUMA lodged an opposition on the ground of its international trade mark covering the same type of goods. This opposition was rejected twice, first by the French national Institute of Intellectual Property (INPI) and then, when Puma appealed that decision, by the Director of INPI.
Puma then appealed the INPI Director’s decision before the Paris Court of Appeal. The clothing manufacturer stressed that its trade mark was highly distinctive and that it was known to a significant part of the relevant public. However, in May 2015 the Court of Appeal rejected PUMA’s appeal, holding that despite the goods covered by the registration application and PUMA trade mark being similar or of the same type, consumers would be able to differentiate both the representation and perception of the signs in question. Specifically, the drawings in the two marks represented different animals and the later mark also included a verbal element completely dissimilar to Puma’s name. Thus, there was no risk that consumers would mistake the origin of the goods and no there was likelihood of confusion.
PUMA nevertheless lodged a further appeal before the Court of Cassation. According to the company’s argument, likelihood of confusion should be assessed taking into account the distinctiveness of the earlier trade mark, including its reputation, as well-known trademarks benefit from wider protection.
What did the court decide?
The Court of Cassation handed down its decision in March 2017, and overturned the judgement of the Court of Appeal. It agreed with Puma that the distinctiveness of PUMA’s trade mark should be assessed taking into account the fact that this trade mark was well-known by the public.
Why does this matter?
This decision appears as a reminder that, to paraphrase George Orwell, some IP rights are more equal than others. A trade mark which on first being used and registered may have no more than average distinctiveness can become increasingly distinctive with time and usage and, consequently, achieve a greater degree of protection. Indeed, this is consistent with the Court of Justice of the European Union ruling in the Canon case, that the likelihood of confusion is increased when trademarks have a highly distinctive character “either per se or because of the reputation they possess on the market”. This enables a successful brand to maintain a broader range of exclusivity than a business newly starting out, even though both are relying on the same legislation.
Consequently, both at the time of the registration (to find potentially dangerous prior trademarks) and in the event of an allegation of infringement (to prove likelihood of confusion) the assessment of likelihood of confusion must take into account the trade mark reputation. This will never be an exact science, but with experience in trade mark matters it is at least possible to make an ‘educated guess’. Even such a degree of risk assessment can be a better guide for action than simply assuming the visible differences between marks will foreclose any possibility of confusion.