Fame of MANDRAKE spells cancellation for Mandrake Soft's marks

In Hearst Holding v Mandrake Soft (Case 12/12/03 3rd Chamber 2nd Section), the Paris Court of First Instance has ordered the cancellation of trademarks and domain names owned by the defendant that included the word 'Mandrake'. It held that the registrations infringed the plaintiffs' rights in the famous MANDRAKE mark.

Mandrake Soft, a French company, is a distributor of Linux software. It owned both national and international registrations for three marks that included the word 'Mandrake', as well as a number of related domain names. The marks were registered for electronic goods, computer software and telecommunications services in Classes 9, 38 and 42 of the Nice Classification.

US companies Hearst Holding and King Features Syndicates (the plaintiffs) own the IP rights in the Mandrake the Magician comic-strip character. They brought an action against Mandrake Soft alleging infringement of (i) the prior registered trademark MANDRAKE, and (ii) the copyright in the Mandrake the Magician character. As the MANDRAKE mark was not registered for the same classes of goods and services as those covered by Mandrake Soft's marks, the plaintiffs argued that their mark was well known and therefore required a higher level of protection.

The Paris Court of First Instance upheld the claim and ordered the cancellation of Mandrake Soft's marks and domain names. It agreed with the plaintiffs that the MANDRAKE mark was famous, taking into account the fact that the plaintiffs had used the trademark intensively in France and elsewhere for almost 70 years. It further stated that the Mandrake the Magician name and character were sufficiently original to be protected by French copyright law.

Thus, the court seems to have taken the view that the fame of the MANDRAKE mark extended beyond the scope of the goods and services specified in the registration. It could quite easily have come to a different conclusion and decided that the fame of the MANDRAKE mark did not cover the goods or services to which Mandrake Soft's marks applied, particularly as the plaintiffs did not provide any evidence that Mandrake Soft's use of its marks had taken unfair advantage of the MANDRAKE mark. Indeed, a number of recent decisions from the Office for Harmonization in the Internal Market (OHIM) (see, for example, the OHIM's decision in the Longchamp Case) have followed this latter line of reasoning, rejecting claims from the owners of well-known marks on the grounds that they have failed to provide proof that the mark is well known in relation to the goods and services covered by the conflicting mark.

Mandrake Soft has lodged an appeal against the decision.

Eric Schahl and Gérard Bareille, Inlex Conseil, Paris