No infringement where website not directed at French consumers
In SA BD Multimedia v H, the Paris Court of First Instance has ruled that French trademark law cannot be applied to prevent the unauthorized use of a French trademark in a domain name operated by a foreign registrant, where the related website is not directed at French consumers. This is the case, even if French internet users can access the website.
BD Multimedia, a communications services provider based in France, owns the French registered trademark DOMINA. It brought a trademark infringement action against H, a German individual, for her registration and use of 'domina.net'. H registered the domain name in Germany and operates the related website from that country. All the text on the website is in German and H has no operations in France.
The Paris Court of First Instance rejected BD Multimedia's complaint. It held that BD Multimedia's evidence against H, which consisted solely of copies of pages from her website in German, did not demonstrate that the French trademark had been infringed.
The decision is at odds with previous court practice and appears to restrict the scope of protection available for French trademark registrations. Typically, French courts have been willing to uphold an infringement complaint where there is evidence (certified by a court bailiff) of unauthorized use of a French trademark registration on a website that is accessible in France. However, in the case at hand, it appears that the court has ruled that this is no longer sufficient and that additional requirements are necessary. Trademark owners must now demonstrate that the website hosted at the disputed domain name is directed at French consumers, notwithstanding the fact that they may have access to the site. This probably means that there must be evidence of a French language version of the website at issue.
Karina Dimidjian, Bureau DA Casalonga-Josse, Paris
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