NUTRI-RICHE court confirms case law for online infringement

In Buttress BV v L'Oréal Produits de Luxe France (Decision 967, July 10 2007), the Commercial Chamber of the French Supreme Court has held that the use of a quasi identical trademark on a website that is not intended for consumers in France does not constitute trademark infringement in France.

Dutch company Buttress BV has held a registration in France since 1981 for the mark NUTRI-RICH in relation to cosmetic goods in Class 3 of the Nice Classification. It filed an infringement action against Lancôme, a subsidiary of L'Oréal, for use on the Lancôme website of the trademark NUTRI-RICHE for beauty masks. The website is presented in French, but is intended for consumers in Europe, the Americas and Asia.

Upholding the Court of Appeal's decision, the Supreme Court ruled that there is no infringement since the products offered under the mark NUTRI-RICHE are presented in the section of the site entitled "Other countries" and are not sold or made available under this mark in France. Further, the court found, such products are offered to consumers in France on the same site under the trademark NUTRI-INTENSE. The court stated that:

"as [the mention of the trademark] on the website, although accessible by internet users in …France, cannot be considered to target the public in France and constitute use in the French territory, the Court of Appeal correctly concluded that such acts did not constitute infringement of the trademark protected in France."

The decision, which is in line with the Supreme Court's reasoning in Société Hugo Boss v Société Reemtsma Cigarettenfabriken Gmbh (January 11 2005), shows that the reproduction of a trademark on a French language website accessible to consumers in France may not amount to trademark infringement if the defendant is able to demonstrate that the goods offered under the mark are not specifically directed to such consumers. The decision also underlines that it is important for legal advisers to work closely with the creative teams designing websites in order to minimize all possible risk of trademark infringement.

Karina Dimidjian-Lecomte and Marie-Emmanuelle Haas, Casalonga Avocats, Paris