France.com kan niet worden geregistreerd als Uniemerk

Gerecht EU 26 juni 2018, ECLI:EU:T:2018:381; C-71/17 (France.com) Merkenrecht. Het tegen 'france.com' kan niet worden geregistreerd als Uniekmerk. Fonetisch zijn de conflicterende tekens bijna gelijk, veel consumenten refereren aan France.com met de enkele term 'france', de afkorting .com wordt gezien als slechts indicatie van een website. Conceptueel zijn de tekens vergelijkbaar met de Eiffeltoren en de kleuren van de franse vlag. Er worden geen vragen gesteld aan het Hof van Justitie.

–        refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

‘(i) In light of [Article] 8(2) [now Article 8(2) of Regulation 2017/1001] and Article 41(1) [now Article 46(1) of Regulation 2017/1001] of [Regulation No 207/2009] and Rule 15(2)(b) and Rule 17 of [Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark] [now Articles 2(2)(b) and 5 of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)], in opposition [proceedings], does the applicant, as the defendant to the opposition, have the right to invoke prior rights which could constitute prior rights to the earlier trademark used as a prior right in the opposition?

(ii) Does the French [Republic] have any kind of prior intellectual property right [in] the word ‘France’, which is not the official name of the French State and is just a geographical entity?

(iii) If the answer to the question (ii) is ‘no’, should the name ‘France’ be considered as a word which is in the public domain and [in respect of] which no one can claim any intellectual [property] right?

(iv) If the answer to the question (ii) is ‘yes’, should the fact that the French [Republic] [to date] has never claim[ed] any rights in the word ‘France’, except [as] against [the applicant] be considered as […] discrimination against the applicant?’

22      Consequently, the request that questions be referred to the Court of Justice for a preliminary ruling must be rejected as inadmissible.

58      As regards the visual comparison of the signs at issue, the Board of Appeal stated, in paragraph 21 of the contested decision, that the overall impression conveyed by the signs at issue was that of the word ‘france’ accompanied by the image of a stylised Eiffel tower and the colours blue, white and red. It also stated that, on account of their size and position (above the word element in one sign, and in front of the word element in the other), the stylised images of the Eiffel tower and the word element ‘france’ in those signs were of equal importance. In paragraph 22 of the contested decision, the Board of Appeal considered that the abbreviation ‘.com’ in the sign applied for would be perceived by the reasonably observant consumer as a secondary element. Consequently, the Board of Appeal concluded, in paragraph 23 of the contested decision, that the signs at issue had an average degree of visual similarity on account of their structure and elements in common, that is, the same word, the same figurative element and the same colours, notwithstanding their different designs.

59      The applicant submits that, in the earlier mark, the dominant element is the figurative element depicting the Eiffel tower, which is six times larger than the word ‘france’. By contrast, in the mark applied for, the word element ‘france.com’ is dominant. What is more, the applicant argues, the Board of Appeal erred in finding that the figurative element of the signs at issue is the Eiffel tower. The figurative element of the mark applied for is not the Eiffel tower, but a pentagon in the shape of France, inside which an Eiffel tower can be made out. Consequently, those signs have only a low degree of similarity, or are even not similar at all, from a visual standpoint.