Partial success for Intel in trade name dispute

France
The Paris Court of First Instance has held that use of the trademark [email protected] [email protected] and the trade name [email protected] infringed the rights of US company Intel Corporation and its French affiliate, Intel Corporation SAS (collectively Intel), and constituted unfair competition (November 26 2009). 
 
French company Maintelcom SARL registered the domain name 'maintelcom.com' and the semi-figurative trademark [email protected] [email protected] for products and services relating to computer science. It also used the name [email protected] as its trade name. Intel considered that the trademark [email protected] [email protected], the trade name [email protected], the company name Maintelcom and the domain name 'maintelcom.com' all infringed its prior trademark rights and company names. As the parties could not reach an agreement, Intel sued Maintelcom for infringement of its rights.
 
Maintelcom argued that its name corresponded to the first letters of the words 'maintenance', 'informatics', 'telephone' and 'communication', and that the public would not establish a connection between Maintelcom and Intel.
 
The Paris Court of First Instance decided that use of the mark [email protected] [email protected] and the trade name [email protected] infringed Intel's rights and constituted unfair competition. However, it decided that use of the term 'Maintelcom' in the company name and domain name was neither unfair nor an infringement of Intel's rights.
 
In the view of the court, the trade name Intel and the INTEL marks were well known in the field of computer science, including microprocessors. The court noted that the addition of '[email protected]' and 'com' did not reduce the distinctiveness of the term 'Intel' because they were common in the computer field. It thus ruled that using the term 'Intel' in the [email protected] [email protected] mark was an unjustified use of the term 'Intel' - notably because of the quality standards associated with Intel, and especially because Maintelcom offered Intel products on its website.
 
Further, the court ruled that using the term '[email protected]' as a trade name in the field of computer science was a clear infringement of the INTEL marks, as this created a risk of confusion in the public's mind. For the same reasons, the court found that Maintelcom was liable for acts of unfair competition. The court thus ordered the cancellation of the [email protected] [email protected] mark. It also ordered that Maintelcom change its trade name and pay €15,000 in damages and costs to Intel.
 
However, although Maintelcom's company name and domain name were also used for computer science related activities, the court found that there was no risk of confusion between the terms 'Maintelcom' and 'Intel'. Despite the fact that the term 'Maintelcom' included the letters 'I', 'N', 'T', 'E' and 'L', it consisted of three syllables, read by the French public as 'main-tel-com'. The difference drawn by the court between [email protected] and 'Maintelcom' was that the '@' created a hyphen effect and, therefore, the term 'Intel' was more apparent in the trademark [email protected] [email protected] The court stated as follows:
 
"The name Intel, consisting of two syllables, despite being a well-known trademark, became part of the domain name and lost its attractiveness, especially since the company Maintelcom is in the business of computer maintenance, which is strongly suggested by the term ['Maintelcom']."
 
The court was thus of the opinion that the registration and use of the domain name 'maintelcom.com' did not infringe the INTEL marks and did not constitute unfair competition.
 
The reasoning behind the court's solution regarding the domain name follows French case law. On December 13 2005 the Cour de Cassation, the highest court in the French judiciary, ruled in the LOCATOUR Case that a domain name can infringe a prior trademark only where:
In the present case, the absence of confusion was debatable. It could be argued that 'Maintelcom' might be read by the French public as 'Ma-Intel-com' ('ma' meaning 'my' in French). Therefore, this would lead the French public to think that the website associated with 'maintelcom.com' was dedicated to Intel consumers.
 
David Taylor, Lovells LLP, Paris 

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