Domain names and trademarks give equal prior rights
In Sarl La Société Temesis v Association Afaq, the Nanterre Court of First Instance has specified the conditions under which a trademark registration can be cancelled on the basis of a prior domain name registration pursuant to Article L711-4 of the French Intellectual Property Code.
Temesis registered 'e-qualite.com' in October 1999. Two months later, Afaq registered the mark E-QUAL in relation to, among other things, IT management services. Temesis subsequently brought a cancellation action against the E-QUAL mark on the basis of its prior domain name registration. Afaq argued that the domain name did not constitute a prior right because it was not used until January 2000 when the website became active.
The court ruled in Afaq's favour. Although it found that domain names may give rise to prior intellectual property rights pursuant to Article L711-4, it stated that two conditions must be satisfied to bring a successful cancellation action on this basis. Firstly, the domain name must have been in use before the application for the contested trademark was filed. Secondly, a risk of confusion between the domain name and the contested trademark must exist in light of the relevant goods and services. In the case at hand, the court found that the first condition was not satisfied and, therefore, rejected Temesis's claim.
In light of this decision, all trademark clearance searches in France should include not only prior trademark registrations, but also internet searches for domain names already in use.
Karina Dimidjian, Bureau DA Casalonga-Josse, Paris
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