Coexisting French marks conflict in European Union

In Esprit International v Esprit de France, an Office for Harmonization in the Internal Market (OHIM) Board of Appeal has allowed Esprit International's opposition to the registration of ESPRIT DE FRANCE as a Community trademark.

Esprit International, a partnership based in the United States that owns a Community trademark registration for ESPRIT, filed an opposition action against Esprit de France's application to register the mark ESPRIT DE FRANCE for goods in Classes 3 and 24 of the Nice Classification. The opposition was upheld by both the OHIM's Opposition Division and the Board of Appeal on the grounds that there was a likelihood of confusion between the two signs.

This decision contrasts with a Paris Court of Appeals ruling in 1994, confirmed by the French Court of Cassation in 1997, concerning an infringement action between the same parties in France. The French courts held that there was no risk of confusion due to the conceptual differences between the two signs.

The Board of Appeal's ruling emphasizes the importance of considering the relevant territory when filing or defending an opposition before the OHIM. In the case at hand, the prior rights stemmed from Esprit International's Community trademark registrations. Thus, the relevant territory was the European Union as a whole, including non-French speaking countries. Although the OHIM seemed to agree that for French speakers there was a significant conceptual difference between the two signs, it stressed that for non-French speakers, the word 'Esprit' would be perceived as the principal element, with the term 'de France' being perceived as generic. It concluded that there existed a likelihood of confusion in the non-French speaking parts of the European Union, which was a sufficient basis to reject the application.

Karina Dimidjian, Bureau DA Casalonga-Josse, Paris