Domain name found to be insufficient to establish well-known trademark

In a ruling of March 10 2014, the Bordeaux Court of Appeal has decided to deny the claim of a party who had sought to establish the existence of an unregistered well-known trademark, for failing to provide sufficient evidence that the trademark in question was actually well-known by a significant part of the relevant public and within a substantial part of the French market. The main argument put forward to seek to establish the existence of an unregistered well-known trademark was the reference to a domain name and its associated website.

On October 2 2012 Mrs Claudine B (the defendant) filed a French trademark application for ALPHAZOME for products and services relating to the construction of ‘zomes’. The term ‘zome’ in this context refers to a building using unusual geometries.

On December 4 2012 Mr J S (the claimant), owner of the domain name ‘alphazomes.org’ since October 29 2007, filed an opposition against the trademark application with the French Intellectual Property Office (INPI), arguing that the trademark ALPHAZOME could not be registered as the claimant had prior rights in an unregistered well-known trademark in the term ‘alphazomes’, in line with Article L 712-4 of the French Intellectual Property Code. In support of the opposition, the claimant produced information relating to the domain name, the associated website, the number of visitors per year, and references to Alphazomes and the domain name found in several books and articles and a DVD.

On February 5 2013 the director of the INPI denied the opposition on the basis that the claimant had failed to substantiate that ALPHAZOMES was a well-known unregistered trademark. The claimant lodged an appeal with the Bordeaux Court of Appeal on February 26 2013 and filed a final brief on January 31 2014, seeking the cancellation of the INPI decision and confirmation of the fact that the domain name ‘alphazomes.org’ constituted a prior right in accordance with Article L 711-4 of the Intellectual Property Code. The Court of Appeal of Bordeaux denied the appeal.  

The Court of Appeal considered that the evidence provided by the claimant in support of the opposition was insufficient to establish the existence of an unregistered well-known trademark in the term ‘alphazomes’. The claimant had failed to prove that the unregistered trademark he sought to rely on was actually well known by a significant part of the relevant public and within a substantial part of the French market. Moreover, the judges came to this conclusion taking into account the intrinsically limited relevant public with an interest in alternative houses.

The Court of Appeal considered, for instance, that the claimant had failed to demonstrate that the number of visitors per year of the website associated with the domain name ‘alphazomes.org’ (between 15,000 and 19,000) was high in comparison with similar websites relating to alternative housing (no comparison figures were produced). The Court of Appeal also criticised the fact that the claimant had failed to provide evidence of the coverage and circulation of the magazines, DVD and articles where the domain name and the claimant's services were referred to.

Additional new arguments which were not put forward in the opposition from the claimant, but only presented in the final brief for the appeal, were dismissed for procedural reasons.  The Court of Appeal, as an obiter dictum, commented on the new arguments based on an alleged violation of prior rights in the domain name, and explained that, whilst this could under certain circumstances constitute a ground for the cancellation of a trademark, this was not within the remit of the INPI in the context of opposition proceedings and thus could not be considered by the Court of Appeal.

This decision offers a useful illustration of the requirements for establishing the existence of an unregistered well-known trademark, and highlights the fact that thorough and detailed documentary evidence is necessary. Whilst the claimant's demands were refused in this case, an opposition could be successful if the existence of an unregistered well-known trademark is evidenced satisfactorily, and the decision appears to show that such evidence could be based on a domain name and associated website, subject to genuine renown and high levels of traffic.

David Taylor and Vincent Denoyelle, Hogan Lovells LLP, Paris