Esso court confirms that free speech can override trademark rights

In Esso v Greenpeace France, the Paris Court of First Instance has ruled that the general principle of freedom of speech may be used to create an exception to trademark rights under certain circumstances. This decision, which follows the Paris Court of Appeal's decision last year (see Freedom of speech trumps infringement claims), rejects Esso's contention that Greenpeace's use of the marks ESSO, STOP ESSO, E$$O and STOP E$$O on its website amounted to trademark infringement

Specifically, in respect of Greenpeace's use of ESSO as a metatag, the court considered that this did not breach Article L 713-2 of the French Intellectual Property Code, which prohibits the unauthorized reproduction of a trademark for goods or services that are identical to those designated in the trademark registration. The court held that (i) the two parties do not carry out the same activities, and (ii) Greenpeace's use of the mark is not designed to market petroleum, but merely to denote the company.

In relation to Greenpeace's use of the marks E$$O, STOP E$$O, ESSO and STOP ESSO on its site, the court ruled that this did not breach Article L 713-3 of the code. This prohibits both the (i) unauthorized reproduction of a trademark for goods and services that are similar to those designated in the trademark registration, and (ii) unauthorized imitation of a trademark for goods or services that are identical or similar, if such reproduction or imitation creates a likelihood of confusion.

With regard to the imitation of the marks (ie, 'E$$O' imitates the ESSO mark by replacing 'SS' with '$$'), the court held that they were used to criticize the effects of Esso's industrial policies on the environment, without misleading the public with regard to the author of the criticism. The court considered that such use was not connected to the commercialization of identical or similar products.

Therefore, the court considered that use of the trademarked signs did not amount to infringement since Greenpeace (i) merely exercised its right to freedom of speech, which is a genuine non-commercial reason, and (ii) did not create any likelihood of confusion between itself and Esso in the public mind, as required by Article L 713-3 of the Intellectual Property Code and Article 5(1)(b) of the Community Trademark Directive.

The decision is significant with respect to French trademark law, which specifically does not provide for an exception for parody. However, it does follow existing case law on the subject, particularly the Paris Court of Appeal's decision in Danone v Réseau Voltaire (see Parodic use of mark is legal, rules Paris court in landmark judgment).

Isabelle Leroux, Bird & Bird, Paris