When conducting a trade mark availability search, we often recommend adding visual elements in order to avoid a possible likelihood of confusion with prior trade marks.
A recent judgment by the court of Appeal of Paris (Guy F et CIMAX Sarl v Groupe Industrie Services Info (GISI) Sasu – November 27 2015) seems to confirm this recommendation.
Guy, the owner of the French word mark Smart Industries, registered in 2012 with respect to classes 16, 35, 38 and 41, gave an exclusive license to CIMAX. In 2014, CIMAX used the trade mark to designate the organisation of professional exhibitions dedicated to smart industry. A third party GISI applied for and started to use a French word and design Smart Industry Summit in classes 35, 38 and 41. Guy and CIMAX considered this application and use as an infringement and started proceedings against GISI.
The debate was about first the distinctiveness of the denomination Smart Industries and second the likelihood of confusion between the compared trade marks.
Where the Court of First Instance considered that there was no infringement, the Court of Appeal ruled that the expression Smart industries was distinctive per se as it was not exclusively the designation of the designated goods and services, especially in relation to the organisation of exhibitions dealing with the innovation flowing from connected goods.
This ruling meant the Court now had to decide about the possible cancellation of the trade mark. It stated that the expression Smart Industries in 2012 wasn't commonly used in the professional language as a term for the smart industry. Consequently as the prior trade mark was considered to be distinctive, the judges had to find possible infringement.
The second application retrieved the prior trade mark, adding the descriptive term Summit only with a small figurative element consisting in the representation of an arch circling the words. Despite the identity and similarity of the compared services, the judges ruled that there was no likelihood of confusion although the signs are aurally and conceptually similar. However, few small visual differences were sufficient to consider the trade marks to actually be different. As a result , the second application was deemed not to infringe the prior trade mark.
To conclude, adding even the smallest figurative element to a distinctive prior trade mark can avoid a finding of likelihood of confusion.
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Marine Beacco |
Gevers & Ores41, avenue de FriedlandParis 75008, FranceTel: +33 1 45 00 48 48Fax: +33 1 40 67 95 67paris@gevers.euwww.gevers.eu
