DOODLE PRO confusing with DOODLE MAGNA, court rules

The Paris Court of First Instance has held that toy manufacturer Mattel's DOODLE PRO mark was infringing Pilot Pen Corporation of America's French and Community MAGNA DOODLE marks (Paris Court of First Instance, Third Chamber, Second Section, RG: 05/00811, October 27 2006).

Mattel used to be Pilot's exclusive licensee worldwide for the MAGNA DOODLE trademark for magnetic board toys. After expiration of the licensing contract, Mattel started marketing the magnetic boards under the trademark DOODLE PRO, most notably in the United States and France. Pilot sued Mattel for trademark infringement in both the United States and France. The US action is still pending before a US District Court in Connecticut.

Before the Paris Court of First Instance, Pilot sought a preliminary injunction against Mattel, claiming infringement of its MAGNA DOODLE marks covering France. It also claimed that the overall trade dress of Mattel's toys was creating confusion with Pilot's own packaging and sought compensation on the grounds of unfair competition.

Considering first the claim of trademark infringement, the Paris court held that the term 'doodle' is the common element of the two trademarks, but that its meaning would not be understood by the average French consumer. The court rejected the claim of descriptiveness of this word in the French language. Under well-established French case law, the meaning of a foreign word is never taken into account by French courts. French courts focus only on the understanding of the word by the average French consumer, regardless of whether the word has a meaning in a foreign language. Turning to the term 'magna', the court rejected the claim that it was a reference to the word 'magnetic'. Rather, the court held that 'magna' refers to the Latin 'magnum', which means 'tall' in French. The court, however, concluded that there was a risk of association between the terms 'magna' and 'pro' - short for 'professionnel' (ie, 'professional') in French - because both 'magna' and 'pro' are laudatory terms. Accordingly, the court concluded that the mark DOODLE PRO infringed the MAGNA DOODLE marks and ordered Mattel to stop marketing its DOODLE PRO products from the day of the ruling under a penalty of €500 per day for continued infringement.

However, the court dismissed the claim of unfair competition. The court referred to the termination clause of the parties' licence agreement and determined that Mattel was not bound by particular terms as regards product packaging.

It is interesting to note that the court found in favour of Pilot without it having to argue that its marks are well known.

Mattel has filed an appeal.

Gérard-Gabriel Lamoureux, Cabinet Hirsch & Associés, Paris