Numeral marks particularly at risk if used only with additional elements

In SA Du Pareil Au Même v Société Zara France (December 15 2009), the High Court has upheld a decision of the Court of Appeal in which the latter had ordered the cancellation of the trademark 86 on the grounds of non-use.
French company Du Pareil au Même (DPAM) owns a French registration for the trademark 86 (Registration 00 3 036 578) for goods in Class 25 of the Nice Classification (clothing). The mark was registered on June 26 2000.
DPAM sued Société Zara France for trademark infringement after Zara France started selling tank tops bearing the stylized numeral 86. Zara France counterclaimed for the cancellation of the 86 mark, arguing that it lacked distinctiveness and had not been put to genuine use.
On November 12 2008 the Court of Appeal held that the mark was not devoid of any distinctive character. The court referred to provisions of the EU Trademarks Directive (2008/95/EC) and the French Intellectual Property Code, which provided that the registration of trademarks consisting of numerals was possible.
However, the court ordered the cancellation of the mark on the grounds of non-use based on the evidence of use submitted by DPAM. The cancellation was effective from December 1 2005 - ie, the date on which the five-year period following the publication of the mark in the Official Bulletin expired.
With regard to the period preceding that date, the court found that there was no likelihood of confusion between the signs at hand. Zara France used the numeral 86 within a particular composition which, according to the court, would be perceived as evoking a sports top. Therefore, there was no risk of confusion as to the origin of the products.  
On appeal to the High Court, DPAM contested only the cancellation of its trademark on the grounds of non-use. DPAM argued that, over the years, the mark had been used in association with various images and words such as 'baby', 'motocross' or 'Lucy', or under forms such as RW 86 and DP 86. DPAM stated that these variations did not alter the distinctive character of the mark.  
The High Court affirmed the decision of the Court of Appeal. In particular, the High Court held that the lower court had correctly found that:
  • the mark had a weak distinctive character; and
  • the way in which it was used prevented consumers from making a link with the mark itself.
The decision illustrates the fact that trademarks consisting of numerals can have only a limited distinctive character, which has an impact on the obligation of use. Registering such marks is actually easier at the French level than at the EU level. However, the scope of protection of numeral marks is narrow both in France and the European Union. Following the decision of the High Court, it can be inferred that such marks will be vulnerable to cancellation on the grounds of non-use after expiry of the five-year period if they are used only with additional elements.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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