Mistergooddeal knocks out MR GOOD DEAL
Legal updates: case law analysis and intelligence
On October 16 2009 the Paris Tribunal of First Instance issued an interesting ruling involving two rival companies and their domain names.
Mistergooddeal SA operates the website 'mistergooddeal.com', which specializes in clearance sales of appliances, utilities, furniture and other types of goods. The company started operations in the early 2000s. It registered the domain name 'mistergooddeal.com' on January 25 2000 and applied for French and Community trademarks in the name Mister Good Deal on the same date. The trademarks covered services in Classes 35 and 38 of the Nice Classification (mainly sales, promotions and commercial activities on the Internet).
In 2004 Mistergooddeal became aware of a trademark application for MR GOOD DEAL, filed by a company called MGD, covering Classes 25, 28, 35 and 38. Mistergooddeal filed a partial opposition against MGD's application requesting that the mark cover only products in Classes 25 and 28 (including clothing, shoes, belts, socks, beach, ski or sports shoes, and underwear).
The French National Institute for Industrial Property followed Mistergooddeal's reasoning and rejected MGD's application for MR GOOD DEAL in Classes 35 and 38. MGD's mark was however registered in Classes 25 and 28.
In January 2008 MGD sent a cease and desist letter to Mistergooddeal, claiming that it was infringing its trademark MR GOOD DEAL, based on the fact that sportswear and sports shoes were available for sale on 'mistergooddeal.com'. However, the products in question were not sold under the trademark MISTER GOOD DEAL, but under the marks of their respective manufacturers (eg, NIKE and TIMBERLAND).
Conversely, Mistergooddeal noted that MGD was selling sportswear equipment under various trademarks through a website available at 'mr-good-deal.fr'. This had been ongoing since 2006, but ceased on February 20 2008. Nevertheless, Mistergooddeal decided to file an action against MGD for trademark infringement and claimed damages in the amount of €100,000, plus €10,000 in legal fees.
Mistergooddeal claimed that MGD's MR GOOD DEAL mark was being used solely for the purpose of running an online store and should thus be cancelled. In addition, Mistergooddeal claimed that it had acquired sufficient goodwill in its own MISTER GOOD DEAL mark to mean that it was regarded as well known at the time of registration of MGD's mark.
The Paris Tribunal of First Instance examined the issues in turn and first denied the status of a well-known trademark to Mistergooddeal's MISTER GOOD DEAL mark. The tribunal found that sufficient information had not been provided to evidence that the mark had earned such a status. Consequently, MGD's MR GOOD DEAL mark remained valid for other classes.
Turning to the issue of trademark infringement, the tribunal first noted that MGD was entitled to sell goods corresponding to its MR GOOD DEAL mark on the Internet. It was also noted that no actual evidence had been brought to show that MGD had attempted to develop an online shop relating to goods other than those covered in its trademark registration.
Nevertheless, MGD was found liable for trademark infringement because of its use of the domain name 'mr-good-deal.fr'. This was deemed by the tribunal to be an infringement of earlier trademark rights held by Mistergooddeal, and resulted in an award of €10,000 in damages for the latter. The tribunal found that there was a visual and phonetic similarity between the domain name 'mr-good-deal.fr' and the trademark MISTER GOOD DEAL, which was likely to lead to confusion in the mind of the public.
The tribunal also dismissed the counterclaims filed by MGD. First, MGD claimed infringement of its trademark registered in 2004. This was easily dismissed by the tribunal, given that Mistergooddeal's mark was registered in 2000 and that the goods sold on the website 'mistergooddeal.com' were sold under other brand names. In any event, the domain name 'mistergooddeal.com' was registered in 2000 and the tribunal noted that this gave it priority over MGD's mark.
Second, MGD argued to have registered the domain name 'mr-good-deal.fr' in 1999. However, the tribunal found that this was of no assistance, as the domain name had not been used until 2006 - by which time Mistergooddeal's mark had been registered. Third, MGD claimed that it had had a company name in the term 'Mister Good Deal' since 1998, but the tribunal noted that records showed that this was not the case.
David Taylor, Lovells LLP, Paris
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